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Cincinnati, OHPosted 1 weeks ago
Full time

Job Description

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 on USPTO practice, PCT procedure, and IP management best practices.

Job Qualifications

Education

  • Bachelor's degree in a related field; preferably in life sciences, biomedical engineering, chemistry, or a related STEM discipline
  • Advanced degree in a related field (Masters, Ph.D., J.D. with scientific background or patent agent registration)

Experience

  • 5+ years of progressively responsible experience in patent portfolio management, IP administration, or patent prosecution management in a TTO, academic medical center, research institution, law firm, or in-house IP department; AMC TTO experience strongly preferred
  • Demonstrated track record of independently developing and recommending patent strategy including filing, continuation/divisional, claim scope, and maintain/abandon decisions.
  • Substantial US and international prosecution experience including PCT, national phase, EP prosecution and validation, and foreign associate coordination
  • Experience managing outside patent counsel and IP management vendors: setting and monitoring SLAs, managing matter-level budgets, reviewing and approving invoices, and conducting performance reviews

Technical Skills & Knowledge

  • Mastery of US patent prosecution practice including Office Action response strategy, continuation/divisional practice, inter partes review, and maintenance fee management
  • Proficiency in an IP management platform; ability to configure docketing workflows, deadline alerts, and portfolio reporting
  • In-depth knowledge of Bayh-Dole Act requirements relative to IP including iEdison reporting, confirmatory license execution, and government march-in rights
  • Strong scientific literacy in life sciences and MedTech (biologics, small molecules, medical devices, diagnostics, digital health) sufficient to evaluate disclosures and assess claim scope and commercial relevance
  • Working knowledge of technology transfer deal structures; ability to review IP provisions and assess portfolio implications

Competencies

  • Demonstrated ability to exercise sound, independent judgment on complex, high stakes matters; capacity to identify when a matter requires escalation versus when it can be resolved independently
  • Exceptional attention to detail and organizational discipline in a high-volume, deadline-driven environment where errors may have irreversible consequences
  • Effective communicator across a diverse stakeholder set: inventors, portfolio managers, TTO leadership, outside counsel, foreign associates, and federal agency contacts
  • Experience developing and maintaining SOPs; comfort with process improvement and technology adoption
  • Familiarity with academic technology transfer norms and best practices


 

Primary Location

South Campus


 

Schedule

Full time


 

Shift

Day (United States of America)


 

Department

Innovation Ventures


 

Employee Status

Regular


 

FTE

1


 

Weekly Hours

40


 

*Expected Starting Pay Range

*Annualized pay may vary based on FTE status

$100,526.40 - $130,686.40


 

About Us

At Cincinnati Children’s, we come to work with one goal: to make children’s health better. We believe in a holistic team approach, both in caring for patients and their families, and in advancing science and discovery. We strive to do better and find energy and inspiration in our shared purpose. If you want to be the best you can be, you can do it at Cincinnati Children’s. 

Cincinnati Children's is: 

 We Embrace Innovation—Together.  We believe in empowering our teams with the tools that help us work smarter and care better. That’s why we support the responsible use of artificial intelligence. By encouraging innovation, we’re creating space for new ideas, better outcomes, and a stronger future—for all of us. 

Comprehensive job description provided upon request.

Cincinnati Children’s is proud to be an Equal Opportunity Employer committed to creating an environment of dignity and respect for all our employees, patients, and families. All qualified applicants will receive consideration for employment without regard to race, color, religion, sex, age, genetic information, national origin, sexual orientation, gender identity, disability or protected veteran status. EEO/Veteran/Disability

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Patent Manager at Cincinnati Children's Hospital | Renata