ATCC

  • IP and Compliance Specialist

    Job Locations US-MD-Gaithersburg
    Job ID
    2018-2168
    Department
    Corporate Development
  • Overview

    Founded in 1925, ATCC is a non-profit organization with a mission to acquire, authenticate, preserve, develop, standardize, and distribute biological materials and information for the advancement and application of scientific knowledge. 


    The IP and Compliance Specialist is responsible for a portfolio of intellectual property and license compliance matters, evaluating Freedom-to-Operate (FTO) requests and conducting IP Assessments for ATCC Products, and ensuring third-party compliance with agreement obligations. The incumbent is responsible for timely and accurate input of information, managing the data and metrics in the Inteum database and other tools used by the team, and acting as the Inteum database coordinator.  Provides operational support to management as assigned.  This position must work and think independently; completing duties in a timely manner with acceptable quality under minimal guidance.  Discretion in handling assigned responsibilities, including the ability to resolve problems and exercise good judgment while maintaining confidentiality. The incumbent actively supports, complies with and enforces all ATCC company policies and procedures.

    Responsibilities

    1. Responsible for an assigned portfolio of Freedom-to-Operate requests, IP assessments, contract management activities and data analytics tracking utilizing the Inteum database.
    2.  Responsible for coordinating and tracking assigned intellectual property matters, including IP assessments and assisting legal counsel with Freedom-to-Operate opinions including patent searches and reviews.
    3.  Responsible for a portfolio of existing in-license agreements to ensure adequate tracking of in-license intellectual property, including expiration dates and use of technology by ATCC scientists. Re-negotiates in-license agreements as needed to reduce ATCC’s royalty burden where possible.
    4.  Provides support in managing the contract compliance function, including active follow-up with licensees regarding progress reporting and negotiating amendments as needed to review the rights granted where appropriate.
    5.  Assists with the ATCC Trademark and Product Compliance Programs to provide investigative support, data management, and portfolio management.
    6.  Processes freedom-to-operate (FTO) requests to support new product development and evaluates invention disclosures to support new ATCC research, development and collaboration efforts;
    7.  Supports the ATCC Patent Deposit Group in interpretation and compliance with the Budapest Treaty, USPTO and foreign patent office regulations.
    8.  Manages ATCC’s in-licensed agreements and patent portfolio, including monitoring of patent rights and new product development, and re-negotiating in-license agreements where appropriate; participates in select out-licensing activities as directed.
    9.  Assists with the ATCC Trademark and Product Compliance Programs to provide investigative support, data management, and portfolio management.
    10.  Working with outside counsel, researches additional legal issues including regulatory, anti-competitive, product liability, insurance and other matters to support ATCC licensing and related business efforts, and oversees the implementation and enforcement of ATCC material transfer agreement process.
    11.  Utilizing the Inteum database, records and monitors all aspects of trademark and product compliance matters to recommend strategy for Compliance Program, aligned with corporate strategies and goals; Seen as an Inteum subject matter expert, provides data metrics and analytics reports as needed for management.
    12.   Performs other duties as required.

    Qualifications

    Education and Experience:

    • Bachelor’s Degree in a biological science, engineering, health-related field, or business.
    • Minimum of 3-5 years proven experience in licensing, intellectual property, compliance or contracts management in an academic or corporate setting required.

    Knowledge, Skills and Abilities:

    • Working knowledge of Intellectual Property law; Fluency in contractual language and legal implications, contractual risk mitigation, and in the licensing and contracting process.
    • Self-starter, motivated and takes initiative; strong interpersonal and problem-solving skills; able to work collaboratively with all levels of staff and external partners to resolve problems to maximize performance, creativity, problem solving and results.
    • Strong investigative skills, especially in respect to investigating trademark and IP violations and assessing freedom-to-operate; Working knowledge of patent search databases and best practices.
    • Seek, learn, and apply new skills/knowledge to perform job responsibilities.
    • Attentive to detail with a high level of accuracy; exercise sound judgment.
    • Resourceful, diplomatic and professional; deliver outstanding customer service while managing relationships; a can-do attitude and work style that supports teamwork and lead teams when necessary, collaboration and positive relationships.
    • Adaptable; be able to shift priorities and focus as departmental and/or business demands change; ability to manage multiple projects simultaneously under deadlines.
    • Strong analytical skills and organized; completes tasks ahead of schedule.
    • Excellent written and verbal communication skills, including excellent listening skills and presentation skills to communicate clearly, concisely and effectively.Position-relevant computer experience including Microsoft Office (Word, Excel, Visio), contract and IP management software.
    • Follow all company safety practices, Standard Operating Procedures (SOP’s) and policies.

    ATCC is an Equal Opportunity Employer and does not discriminate against any employee or applicant for employment because of race, color, sex, age, national origin, religion, sexual orientation, gender identity, status as a veteran, and basis of disability or any other federal, state or local protected class.

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