Patent Manager
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About the role
Patent Manager Job Profile Summary Serve as the primary owner of patent portfolio operations and IP strategy for a large, complex life sciences and MedTech portfolio for the technology transfer office (TTO). Oversee the full patent lifecycle, from initial filing through prosecution strategy, maintenance, and portfolio governance, in direct support of the TTO's commercialization goals. Serves as the TTO's primary IP strategy resource, bringing to bear a high caliber of analysis and strategic guidance on IP. Manage outside patent counsel and outsourced IP management vendors; ensure operational rigor, deadline compliance, and Bayh-Dole regulatory adherence as it is related to IP. Operates with a high degree of autonomy and exercises sound independent judgment on complex, high-stakes matters, and accountable for time-sensitive obligations. Job Responsibilities Patent Portfolio Management & Strategy Own the full patent portfolio lifecycle and serve as the TTO's primary internal expert on IP strategy. Maintain portfolio intelligence across active patent families, including prosecution status, costs, commercial alignment, and licensing relevance. Conduct regular portfolio reviews, lead annual audits, and manage the patent budget. Develop and recommend patent filing, prosecution, continuation, foreign filing, and maintain/abandon strategies aligned with commercial objectives. Advise on prosecution approaches for active matters, including Office Action response strategy and path‑to‑allowance considerations. Conduct preliminary patentability and prior‑art assessments to support file/hold/abandon decisions, referring matters requiring formal legal opinion to outside counsel. Assess claim strength, prosecution risk, and cost‑value tradeoffs across the portfolio; flag high‑cost or low‑value prosecution paths and ensure informed patent investment decisions. Support licensing diligence activities through claim mapping, patent family summaries, and IP-related analyses. Escalate matters requiring legal interpretation, inventorship analysis, or enforcement to the Legal Department. Prosecution Oversight & Docket Management Maintain an accurate, current patent docket across all active US and international matters. Track all deadlines and ensure timely decision‑making (e.g., no less than 90 days) for all material filings and prosecution actions. Triage incoming correspondence from patent offices and foreign associates; prepare and transmit instructions to outside counsel and foreign associates. Review claims prior to filing, coordinate continuation and related filings, oversee information disclosure statement preparation, and manage inventor signature coordination on assignments and other required documentation. Ensure complete and accurate records are maintained in the IP management platform and institutional repositories. Outside Counsel & Vendor Management Direct outside patent counsel on prosecution strategy; review and approve Office Action responses before filing; authorize new filings and foreign prosecution decisions. Hold counsel accountable to matter-level budgets and quality standards; conduct performance reviews and provide input on counsel selection. Manage IP management vendors, such as docketing firms, annuity service providers, and translation and EP validation service providers by establishing and monitoring SLAs. Review outside counsel and vendor invoices for accuracy; coordinate with Finance to maintain audit-ready expenditure records and provide portfolio cost reporting and budget variance analysis to leadership. Inventor Engagement & Compliance Support Work in close coordination with portfolio managers to provide IP expertise in inventor interactions. Engage inventors on IP-specific matters such as new technical data relevant to prosecution, inventorship changes, public disclosure risks, and execution of required documentation. Equip portfolio managers with IP rationale and prosecution context to support inventor-facing discussions regarding filing decisions and portfolio strategy. Support Bayh-Dole compliance by providing accurate and timely IP data, flagging government funding at intake, ensuring appropriate government support clauses are included in filings, and advising portfolio managers on government rights obligations. Proactively identify compliance issues and escalate legal interpretation questions or risk to the Legal Department. Systems, Reporting & Process Improvement Serve as the institutional subject matter expert for the patent portion of the IP management platform; ensure systems are configured to support automated deadline alerts, portfolio reporting, docketing workflows, and data integrity. Leverage platform capabilities to generate leadership-ready portfolio reports and KPI metrics. Establish and maintain SOPs for all core IP management workflows. Identify and implement process improvements across prosecution coordination, vendor management, and compliance documentation. Stay current