Job Description
NYU Grossman School of Medicine is one of the nation’s top-ranked medical schools. For 175 years, NYU Grossman School of Medicine has trained thousands of physicians and scientists who have helped to shape the course of medical history and enrich the lives of countless people. An integral part of NYU Langone Health, the Grossman School of Medicine at its core is committed to improving the human condition through medical education, scientific research, and direct patient care. At NYU Langone Health, equity, diversity, and inclusion are fundamental values. We strive to be a place where our exceptionally talented faculty, staff, and students of all identities can thrive. We embrace diversity, inclusion, and individual skills, ideas, and knowledge. For more information, go to med.nyu.edu, and interact with us on LinkedIn, Glassdoor, Indeed, Facebook, Twitter and Instagram.
Position Summary:
We have an exciting opportunity to join our team as a Paralegal – Intellectual Property, Technology Opportunities & Ventures.
In this role, the successful candidate serves as a member of Technology Opportunities & Ventures (TOV) to oversee and manage incoming documents from external counsel; create and ensure the accuracy of intellectual property records in an internal database with intellectual property data from internal and external sources. The position is also responsible for timely reporting via the iEdison online government database federally funded inventions as required by the Bayh-Dole Act, as well as monitor and resolve iEdison notifications. The right candidate will also obtain instructions for and implement payment of patent annuities and maintenance fees.
Job Responsibilities:
- Oversee and manage all intellectual property files maintained in an online database (Wellspring Sophia system), including creating new innovation records for new innovation disclosures and intellectual property records for newly filed patent applications;
- Review and upload all copyright, trademark, and patent documents to the online database and proactively obtain the same from external counsel
- Develop and maintain a solid understanding of US and foreign patent rules, including rules relating to relevant deadlines
- Effectively communicate with relevant internal and external parties for processes such as obtaining signatures for required IP-related documents such as declarations, assignments, and powers of attorney
- Maintain working knowledge of foreign intellectual property procedures and apply this knowledge when interacting with external counsel on matters such as execution of foreign assignment and power of attorney documents.
- Oversee and coordinate annuity and maintenance fee monitoring and payments for patent applications and patents including: 1) creating and updating external database (RENEW of the Clarivate IP Platform product) entries; 2) generating and distributing quarterly reports for annuity and maintenance fees due for payment; 3) liaising with TOV Business Managers and/or technology partners to obtain payment instructions for fees due; 4) providing payment instructions to external database and updating patent records to reflect the same in internal database.
- Ensure compliance with reporting obligations related to new invention disclosures and during patent life cycle for a range of funding sponsors such as foundations and also the federal government as outlined in the Bayh-Dole Act.
- Generate and/or enter data to iEdison such as confidential disclosures, government support clauses, licenses to the government and annual invention utilizations reports, and ensure iEdison compliance for matters such as title election and extensions of time
- Respond to requests from NYULH and NYU administration handling grants and contracts for comprehensive information regarding inventions for reports and statements such as interim reports and final statements
- Ad hoc assignments and projects as required or assigned, such as abandoning files and assisting with sorting, printing, and organizing invention disclosures and patents.
- Work collaboratively with other staff such as TOV Project Coordinator as needed to ensure the integrity of data and content in the databases, to streamline processes, and to improve form templates and standard operating procedures, where possible
- Participate in group meetings as requested
- Perform ad-hoc assignments and responsibilities upon request
Planning, Organizing, Collaborating and Decision Making
- Performs within plan, established priorities and across multiple functional areas.
- Exercises initiative and sound judgment in performance. Escalates issues appropriately.
- Detail-oriented with strong organizational and verbal/written communication skills
- Handle multiple assignments in a fast-paced team-oriented environment
- Contributes meaningfully to developing solutions and independently completes assigned work in a timely manner.
- Deliverables are accurate and timely.
- Utilizes time efficiently.
- Prepares in advance for meetings and maintains minutes and action items.
- Contributes to team effort by cross-training colleagues to prevent work interruptions in the event of an absence.
- Coordinates inter-departmentally to resolve discrepancies on customer accounts.
Monitoring, Quality Control, Reporting and Record Keeping
- Maintains an accessible electronic records in Sophia.
- Identifies areas of improvement for current processes and provides recommendations.
- Performs ad-hoc assignments and duties as needed by management and assist in creating and developing other tools to aid in operational efficiencies
- Gathers and collects data from different parties and presents findings as applicable.
Quality Control (Improving Business Processes)
- Follows all SOPs and Job Aids in performing their day to data responsibilities including cross-training for staff.
- Exceptions are managed and resolved. Root cause analyses are preformed when appropriate.
- Practices Continuous Improvement.
Communications
- Maintains confidentiality and discretion with business information
- Ability to communicate effectively with staff, peers, senior management and faculty.
- Positively represents the Institution when dealing with internal and external stakeholders.
Key Competencies:
- Follows NYU Policies and procedures
- Exercises good judgment and effectively prioritizes work
- Understands and embraces Enterprise Systems
- Embraces the practice of Continuous Improvement
- Leads and motivates others
- Change Agent
- Accountable, Collegial and Ethical
NYU Langone Health provides a salary range to comply with the New York City Law on Salary Transparency in Job Advertisements. The salary range for the role is $55,000 – $92,000 annually. Actual salaries depend on a variety of factors, including experience, specialty, education, and hospital need. The salary range or contractual rate listed does not include bonuses/incentive, differential pay or other forms of compensation or benefits.
Minimum Qualifications:
To qualify you must have a Bachelor’s degree plus paralegal certificate (ABA-approved preferred); or an equivalent combination of training, education and 3-5 years of experience with intellectual property; a senior paralegal not specific to intellectual property with at least 5+ years of law firm experience.
Experience with third-party annuity and maintenance fee provider such as Clarivate RENEW (formerly known as CPA) or CPI
Experience with iEdison online government database
Preferred Qualifications:
Experience working in a Technology Transfer office
Familiarity with Wellspring Sophia system or other intellectual property record management database, or similarly relational database
Qualified candidates must be able to effectively communicate with all levels of the organization.
NYU Grossman School of Medicine provides its staff with far more than just a place to work. Rather, we are an institution you can be proud of, an institution where you’ll feel good about devoting your time and your talents.
NYU Grossman School of Medicine is an equal opportunity and affirmative action employer committed to diversity and inclusion in all aspects of recruiting and employment. All qualified individuals are encouraged to apply and will receive consideration without regard to race, color, gender, gender identity or expression, sex, sexual orientation, transgender status, gender dysphoria, national origin, age, religion, disability, military and veteran status, marital or parental status, citizenship status, genetic information or any other factor which cannot lawfully be used as a basis for an employment decision. We require applications to be completed online.
If you wish to view NYU Grossman School of Medicine’s EEO policies, please click here. Please click here to view the Federal “EEO is the law” poster or visit https://www.dol.gov/ofccp/regs/compliance/posters/ofccpost.htm for more information.
NYU Langone Health provides a salary range to comply with the New York City Law on Salary Transparency in Job Advertisements. The salary range for the role is $55,595.28 – $92,658.80 Annually. Actual salaries depend on a variety of factors, including experience, specialty, education, and hospital need. The salary range or contractual rate listed does not include bonuses/incentive, differential pay or other forms of compensation or benefits.
To view the Pay Transparency Notice, please click here