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Intellectual Property Specialist - Physical Science

University of Texas at Austin, Austin, Texas, us, 78716

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Mission of Discovery to Impact

Discovery to Impact stands at the heart of transforming academic research into real-world solutions, serving as the pivotal bridge between campus innovators and the industry. Our mission is to harness the power of over 130 campus programs dedicated to entrepreneurship and intellectual property, guiding groundbreaking research from concept to commercial success. Through fostering strategic partnerships with corporations, investors, and entrepreneurs, we ensure that the University's innovations transition from labs and studios into services, solutions, and products that profoundly benefit society. Join us in our quest to change the world, one innovation at a time. Purpose

The IP Specialist for physical science is responsible for soliciting and managing innovation in physical science material and technology areas created by university faculty, staff, and students from the University of Texas at Austin and Dell Medical School. The IP specialist will educate the university community on IP practices, policy, ensure compliance with the University of Texas System’s Regents’ Rules, and assist in developing the university's intellectual property assets for commercialization opportunities. Responsibilities

Intellectual Property Management: Actively manage a portfolio of physical science inventions with the objective of supporting UT research innovation and commercialization through superior service and support, including:

Proactively capture innovation from university research in the areas of physical science for IP consideration; Fielding faculty consultations and fostering excellent working relationships with inventors; Evaluating invention disclosures for patent-ability through prior art searches; Coordinating with the Business Development team, evaluating invention disclosures for commercial value and overall market potential; Building and maintaining effective relationships with outside patent counsel to identify appropriate patent counsel and working with counsel and inventors to draft, file, and prosecute patent applications with commercially relevant claims; Growing the physical science IP portfolio in strategic areas and pruning non-aligned IP from the portfolio; Coordinate with the Business Development and Licensing and Collaborative Research teams on continuous advancement of the portfolio

Outreach and Relationship Management: Actively engage in outreach with UT Austin faculty to raise awareness of the services provided by the Discovery to Impact organization and promote a culture of innovation.

Serve as the primary relationship manager for University inventors, including maintaining knowledge of the current status of individual researcher portfolios throughout the commercialization process. Advise University inventors regarding University intellectual property policies and related technology commercialization processes.

Advise on Intellectual Property: Advise University inventors regarding University intellectual property policies and related technology commercialization processes. Other Duties: Perform additional responsibilities as assigned by the Director of Intellectual Property. Required Qualifications

Advanced degree (Master’s or PhD) in Physics, Engineering, Chemistry, or a related Physical Science field. Experience in technology transfer, R&D, or IP management within a technical industry or academic research setting (Minimum 1 year, may include internships). Knowledge of Patent Law with experience in patent-ability assessments and market validation — the ability to perform prior art searches and competitive landscape analyses for new technologies. Ability to translate complex technical concepts for legal and business audiences; experience interfacing with scientists and engineers to identify commercially viable inventions. Capable of managing a broad IP portfolio consisting of multiple assets at different stages of the lifecycle, from initial disclosure to commercialization. Self-motivated professional with the strategic mindset to prioritize high-value disclosures and meet strict filing deadlines. Available for occasional travel to visit labs or attend industry conferences, with the ability to work extended hours during peak filing or negotiation periods. Preferred Qualifications (candidates need not have all of these qualifications to apply)

A background in Patent Law or Technology Transfer is highly preferred. Experience applying statutory requirements to complex physical science inventions (e.g., novelty, non-obviousness) Experience with technology licensing principles, including royalty structures, field-of-use restrictions, and material transfer agreements (MTAs). Advanced degree or Registered Patent Agent. Advanced skills in IP management software, patent search databases (e.g., USPTO, Espacenet, Derwent), and standard productivity applications. Technology transaction and IP licensing experience Experience advising internal compliance, operations, and process functions Extensive knowledge of licensing. Experience collaborating with business and research teams to determine optimal strategies for patent filing and prosecution. Demonstrated ability to work with university researchers to understand early-stage technology concepts, communicate effectively with regards to the patenting process, and ensure understanding among the researcher, the patent attorney, and the internal team. Working knowledge of policies/issues relating to commercialization of university science-based research. Demonstrated ability to articulate an invention's potential technological and commercial impact.

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