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The Office of Technology Commercialization (OTC) is seeking an Intellectual Property Analyst who will identify and evaluate technology disclosures for patent eligibility, commercial viability, and appropriate patent protection of new inventions created at UT Dallas for a designated portfolio of technologies. The designated portfolio may include the work of research faculty and disciplines which may comprise material science, electrical and mechanical engineering, chemistry, biochemistry, biotechnology, life science, computer science, and other disciplines as assigned. Upon determining a patentability and commercialization path, the Intellectual Property Analyst will be responsible for managing patent prosecution for the designated portfolio of technologies utilizing outside counsel. The Intellectual Property Analyst will provide support in the development of commercialization strategies. This position is an integral part of a team contributing to the ongoing evolution of UTD in its mission of commercializing university intellectual property and enhancing the economic development of the Dallas-Fort Worth Metroplex.

Minimum Education And Experience

Bachelor's degree in material science, electrical engineering, chemistry or other related disciplines.

0-3 years experience performing art searches/patent eligibility analyses and drafting reports.

0-3 years performing commercial viability analyses.

A combination of relevant education and experience may be considered.

0-3 years drafting/negotiating university technology licenses.

Preferred Education And Experience

• The candidate will have a working knowledge of technology transfer and a working knowledge of patent prosecution processes with at least 2-3 years of prior experience in managing intellectual property, patent development, and commercialization decision-making.
• Ph.D. in one or more technology-intense fields from life sciences, physical sciences, or engineering disciplines.
• The ideal candidate will have 3-5 years of experience as a technology analyst within a university technology transfer office and/or registered as a patent agent with the USPTO with 3-5 years of experience including invention evaluation, and patent prosecution or examination.
• Effective writing skills (including excellent proofreading, spelling, grammar, and punctuation).
• Extreme attention to detail and exceptional organizational skills.
• Demonstrated ability to meet inflexible deadlines on your own initiative.
• Demonstrated verbal communication skills, and excellent interpersonal and general communication skills, especially in working with Ph.D.-level scientific researchers and in working with patent lawyers.
• Proficient computer and database skills including the Microsoft Office Suite. Preferably, the candidate will have experience with an intellectual property database or docketing system for IP management within a technology transfer environment.

Essential Duties And Responsibilities

• Perform technology disclosure intake review. Liaise with University inventors to review technology disclosures, articulate clear and concise descriptions of perceived core inventions, analyze and report factors such as funding and publications that may impact or inform process workflow, timelines, and prioritization. Routinely communicate with University inventors to discuss technical details and commercialization pathways of technologies, to understand inventors' motivations, to align expectations, to provide status updates and process transparency, to cultivate positive working relationships, and to educate and advise inventors regarding University and UT System intellectual property policies, procedures, and related technology commercialization issues.
• Evaluate patentability and decision-making on initial patent protection. Perform prior art searches for new inventions created at UT Dallas to comprehensively evaluate patent eligibility. Review patents, journal articles, papers, conference presentations, and the like to identify prior art that may be similar or related to, or overlap with, University inventions. In the context of the identified prior art, assess the novelty, obviousness, and breadth/narrowness of potential patent scope to formulate patent strategies for University inventions. Identify situations requiring a rapid response by OTC, working with inventors and outside counsel to accomplish appropriate intermediate patent protection while managing the inventor's expectations.
• Evaluate the commercial viability of University inventions. Analyze what problem(s) the invention purports to solve, how the invention compares to currently available solutions with respect to performance, price, etc., the estimated level of investment/time required to get to market, and whether or not any relevant freedom to operate concerns exist. Work with the inventors to arrive at a clearly articulated “value proposition” statement for the invention.
• Disposition of university technologies and make next-step recommendations. Develop and communicate IP protection and commercialization strategies based on patent eligibility, commercial viability, and other qualitative and quantitative factors. Prepare and maintain thorough written analysis and reports of same and regularly present findings to OTC staff for internal discussion. Effectively communicate the OTC's formal disposition of inventions to University inventors.
• Manage patent prosecution for a designated portfolio of technologies. The intellectual property manager will work with licensees, inventors, and outside counsel to make appropriate decisions in the best interest of UTD and the UT System from patent filing through the payment of maintenance fees, abandonment decisions, and all other decisions regarding the life cycle of patents.
• Develop and manage strong relationships with University researchers and industry partners to build a pipeline of innovative technologies and business development opportunities.
• Working with sponsored research staff and OTC licensing staff as needed, assist with drafting various agreements and contracts, including NDAs, options, license agreements, inter-instructional agreements, and the like. As requested, assist OTC with preparing non-confidential summaries/marketing collateral, identify marketing targets, and facilitate initial outreach to same.
• As requested, give presentations to stakeholder groups on various topics related to OTC operations and participate in outreach events to same. Manage and complete special OTC or University projects as assigned by supervisor.
• Working with the OTC team, update and maintain the OTC's database and technology tracking docket, attend and/or facilitate regular review meetings regarding same. Prioritize technology processing queue based on patent bar dates or other urgencies. Work with the OTC staff to develop improved process workflows and systems to increase efficiency, transparency, outcomes, and metrics reporting. Contribute to standard operating procedure documents for same.

Additional Information

After the 6 month probationary period, this role may be eligible for a hybrid (partly remote/partly in office) work schedule, subject to business need and manager approval. May be required to use personal computer and other standard office equipment. Must be located within the DFW Area and have the ability to be on campus with 24 hours of notice. A UT Dallas Remote Work Agreement will be required within 14 days after approval.

What We Can Offer

UT Dallas is an Equal Opportunity Employer with an employee-friendly and supportive work environment. Our comprehensive compensation and benefits package that is effective as of your hire date includes:

• Competitive Salary
• Tuition Benefits
• Internal Training
• BCBS PPO Medical insurance – 100% paid for full-time employees
• PPO and DHMO Dental Insurance Plan – PPO plans include ortho benefits
• Vision Insurance
• Long and short-term disability
• TRS Retirement Plan – defined benefit plan offering lifetime annuity upon retirement
• Voluntary Retirement Plan Options – additional savings opportunities with Tax-Sheltered Annuity Plans and Deferred Compensation Plans
• Dental/Vision/AD&D
• Paid time off
• Paid Holidays
• Paid Winter Break
• Fertility Benefits
• Remote Work Options – approved by department

All UT Dallas employees have access to various professional development opportunities, including a membership to Academic Impressions, LinkedIn Learning, and UT Dallas Bright Leaders Program. Visit https://hr.utdallas.edu/employees/benefits/ for more information.

If you are looking for a rewarding career opportunity with great benefits? Look no further! Join our team!

Important Message

• All employees serve as a representative of the University and are expected to display respect, civility, professional courtesy, consideration of others and discretion in all interactions with members of the UT Dallas community and the general public.
• The University of Texas at Dallas is committed to providing an educational, living, and working environment that is welcoming, respectful, and inclusive of all members of the university community. UT Dallas does not discriminate on the basis of race, color, religion, sex (including pregnancy), sexual orientation, gender identity, gender expression, age, national origin, disability, genetic information, or veteran status in its services, programs, activities, employment, and education, including in admission and enrollment. EOE, including disability/veterans. The University is committed to providing access, equal opportunity, and reasonable accommodation for individuals with disabilities. To request reasonable accommodation in the employment application and interview process, contact the ADA Coordinator. For inquiries regarding nondiscrimination policies, contact the Title IX Coordinator.