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Director Contracts & IP Operations

Employer
Johns Hopkins University
Location
Maryland, United States
Salary
Salary Not Specified
Date posted
Aug 18, 2021

Johns Hopkins Technology Ventures is seeking aDirector of Contracts & IP Operations(Director Technology Transfer) who will be a senior professional responsible for managing the drafting, review, negotiation, analysis and maintenance of legally binding transactional agreements within Johns Hopkins Technology Ventures (JHTV), including agreements for collaborative research, technology licensing, material transfer, and confidential disclosure. This position is also responsible for ensuring protection of JHU Intellectual Property assets through the management of docketing of worldwide patent office deadlines and requirements, payments of annuities required to maintain patents, and federal compliance with Bayh-Dole regulations. The Director will provide contract drafting and intellectual property expertise, mentorship, and team building for members working within the department. This position will play a key role in the development of quality control standards, compliance procedures, contract language resources, and management and analytics tools. The Director will also provide educational outreach, relationship management, and collaboration with faculty and other JHU offices to ensure compliance with JHTV’s goals, as well as JHU’s policies and legal obligations. This position reports to the Executive Director, Technology Transfer.

Specific Duties & Responsibilities:

Contracts

  • Reviews, negotiates and drafts a variety of agreements with academia and industry, including but not limited to: collaborative research agreements, repository agreements, technology licensing agreements, material transfer agreements, inter-institutional agreements, assignment of rights agreements and confidential disclosure agreements to ensure that terms and conditions are consistent with JHTV’s goals, JHU’s policies and legal obligations.
  • Works closely with the Office of General Counsel, the Offices of Research Administration, University Institutional Review Boards, Office of Policy Coordination, Office of Human Research Protections, JHU faculty, industry representatives, academic institutions, and others, as appropriate, to ensure consistency with JHU’s policies
  • Recognizes, identifies, analyzes and communicates business, policy and legal issues and/or opportunities to JHTV leadership and staff, other JHU offices, and/or the Office of General Counsel, as appropriate.
  • Contributes to JHTV’s strategic planning
  • Manages and maintains agreements in the JHTV Agreements database.
  • Provides contract review and drafting support to JHTV professionals
  • Designs and implements systems, processes, tools and metrics to support review, negotiation, drafting, quality control and compliance for JHTV agreements.
  • Designs and implements systems, processes, tools and metrics to analyze and predict contracting cost, agreement complexity, risk, and value.
  • Designs and implements faculty education programs.
  • With Office of General Counsel, creates and maintains agreement templates.
  • Engages in outreach and education relative to JHTV, intellectual property and technology transfer practices.
  • Establishes and maintains contacts with business and academic IP managers, legal counsel and representatives at other academic institutions.
  • Generates and maintains statistical reports on all agreements and activities for which this position has oversight.

IP Management

  • Develops reporting compliance structure and processes using systems, staff and other resources to establish and maintain procedures for meeting all federal deadlines and requirements using iEdison and other reporting methods.
  • Manages staff responsible for disclosure, application and utilization reporting to the NIH and other agencies primarily through the iEdison government reporting system to ensure compliance with Bayh-Dole.
  • Ensures that open communications are maintained with staff, inventors, co-owners, law firms and licensees to gather necessary information for iEdison reporting including grant numbers and invention details. Coordinates and conducts complex historical research on grants and technologies to verify and complete records.
  • Maintains thorough knowledge and experience with procedures and regulations of the patent prosecution process relating to intellectual property across the globe and at Johns Hopkins University and Technology Ventures, and translates this knowledge and information to staff.
  • Manages the team access to the Inteum and CPI databases which includes creating and ensuring compliance with checks and balances for data entry with consistency and reporting, and maintaining accurate databases.
  • Manages the disclosure process and the Inteum Inventor Portal.
  • Manages correspondence flow ensuring all deadlines and documents are identified, addressed, logged and stored.
  • Manages the JHU patent docket system ensuring process and law is followed and maintained in the CPI information system.
  • Provides paralegal support to JHTV’s internal Patent Counsel department

Supervisory Responsibilities:

  • Serves as a key member of JHTV’s management team, providing leadership and direction on a variety of departmental topics.
  • Manages subordinate staff and is responsible for the overall direction, coordination, and evaluation of theteam. Staff consists of:
  • 3 Contracts Associates, JD required
  • 4 Paralegals
  • 1 Sr. Patent Administrator
  • 1 iEdison Administrator
  • 4 Administrative support positions
  • Motivates team and provides strong leadership; hires and trains associates; plans, assigns, and directs work; executes performance management; and addresses employee relations matters in a timely fashion.
  • Sets clear performance expectations, provides feedback to others, recommends training and coaching when appropriate, ensures recognition for results and takes corrective action to resolve performance problems as appropriate
  • Scope of Responsibility:

    • Knows the formal and informal departmental goals, standards, policies and procedures of the University and interacts with JHU leaders.

    Decision Making:

    • Exercises independent judgment and makes decisions concerning patent processing, federal patent compliance and acceptable terms and conditions in MTA’s and NDA’s.
    • Makes recommendations concerning processes and procedures for contract review, negotiation, drafting and analysis.
    • Makes recommendations regarding substantive contract language, negotiation strategy, potential risk, and projected contracting cost.
    • Does not provide legal advice, but may present issues to the Office of General Counsel, and interpret and implement GC’s legal advice.

    Authority:

    • Directs the activities of staff or a function.
    • Acts as authorized JHU signatory in the execution of MTA’s and NDA’s.

    Minimum Qualifications (Mandatory):

    • JD from an accredited law school is required.
    • Minimum of five (5) years of solid experience negotiating and drafting contracts in a university research setting.
    • Experience gained in a law firm or corporate setting will be considered.
    • Knowledge of the Bayh-Dole Act required.
    • Familiarity with intellectual property law and technology licensing highly preferred.
    • Supervisory experience required.

    Special Knowledge, Skills & Abilities:

    • U.S. Citizen or Legal Permanent Resident required, due to Federal Export Controls
    • Customer service focused with strong emphasis on faculty interactions and able to work in accordance with university wide policies.
    • Able to build positive relationships with internal business stakeholders and leadership, with a demonstrated ability to positively influence outcomes.
    • Able to understand, review, draft and negotiate technology transfer agreements with substantial intellectual property terms incorporating complex technologies
    • Able to efficiently manage a significant volume of transactions
    • Able to multi-task under deadline pressure
    • Excellent written and verbal communication skills.
    • Able to effectively communicate with all levels of the organization and to work in a collaborative team environment.

    Classified Title:Director Technology Transfer
    Working Title: Director Contracts & IP Operations
    Role/Level/Range: ATP/04/PH
    Starting Salary Range:Commensurate with Experience
    Employee group: Full Time
    Schedule: M-F, 8:30am-5pm
    Exempt Status: Exempt
    Location: 04-MD:School of Medicine Campus
    Department name: 60006028-Finance and Administration
    Personnel area: Academic and Business Centers

    The successful candidate(s) for this position will be subject to a pre-employment background check.

    If you are interested in applying for employment with The Johns Hopkins University and require special assistance or accommodation during any part of the pre-employment process, please contact the HR Business Services Office atjhurecruitment@jhu.edu. For TTY users, call via Maryland Relay or dial 711.

    Johns Hopkins has mandated COVID-19 and influenza vaccines, as applicable. Exceptions to the COVID and flu vaccine requirements may be provided to individuals for religious beliefs or medical reasons or because the individual is pregnant or attempting to become pregnant. Requests for an exception must be submitted to the JHU vaccination registry. For additional information, applicants for SOM positions should visit https://www.hopkinsmedicine.org/coronavirus/covid-19-vaccine/and all other JHU applicants should visit https://covidinfo.jhu.edu/health-safety/covid-vaccination-information/.

    The following additional provisions may apply depending on which campus you will work. Your recruiter will advise accordingly.

    The pre-employment physical for positions in clinical areas, laboratories, working with research subjects, or involving community contact requires documentation of immune status against Rubella (German measles), Rubeola (Measles), Mumps, Varicella (chickenpox), Hepatitis B and documentation of having received the Tdap (Tetanus, diphtheria, pertussis) vaccination. This may include documentation of having two (2) MMR vaccines; two (2) Varicella vaccines; or antibody status to these diseases from laboratory testing. Blood tests for immunities to these diseases are ordinarily included in the pre-employment physical exam except for those employees who provide results of blood tests or immunization documentation from their own health care providers. Any vaccinations required for these diseases will be given at no cost in our Occupational Health office.

    Equal Opportunity Employer
    Note: Job Postings are updated daily and remain online until filled.

    EEO is the Law
    Learn more:
    https://www.eeoc.gov/sites/default/files/migrated_files/employers/poster_screen_reader_optimized.pdf

    School of Medicine - East Baltimore Campus


    The successful candidate(s) for this position will be subject to a pre-employment background check.

    If you are interested in applying for employment with The Johns Hopkins University and require special assistance or accommodation during any part of the pre-employment process, please contact the HR Business Services Office at jhurecruitment@jhu.edu. For TTY users, call via Maryland Relay or dial 711.

    The following additional provisions may apply depending on which campus you will work. Your recruiter will advise accordingly.

    During the Influenza ("the flu") season, as a condition of employment, The Johns Hopkins Institutions require all employees who provide ongoing services to patients or work in patient care or clinical care areas to have an annual influenza vaccination or possess an approved medical or religious exception. Failure to meet this requirement may result in termination of employment.

    The pre-employment physical for positions in clinical areas, laboratories, working with research subjects, or involving community contact requires documentation of immune status against Rubella (German measles), Rubeola (Measles), Mumps, Varicella (chickenpox), Hepatitis B and documentation of having received the Tdap (Tetanus, diphtheria, pertussis) vaccination. This may include documentation of having two (2) MMR vaccines; two (2) Varicella vaccines; or antibody status to these diseases from laboratory testing. Blood tests for immunities to these diseases are ordinarily included in the pre-employment physical exam except for those employees who provide results of blood tests or immunization documentation from their own health care providers. Any vaccinations required for these diseases will be given at no cost in our Occupational Health office.

    Equal Opportunity Employer
    Note: Job Postings are updated daily and remain online until filled.

    EEO is the Law
    Learn more:
    https://www1.eeoc.gov/employers/upload/eeoc_self_print_poster.pdf
    Important legal information
    http://hrnt.jhu.edu/legal.cfm

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