Patent Advisor

Class Specifications – F.25
Patent Advisor III – 7571
Patent Advisor II – 7572
Patent Advisor I – 7573

August, 1981

Series Concept

Patent Advisors perform patent and/or intellectual property licensing work in an assigned functional area that require a sound knowledge of a physical science, biological science of engineering; and perform other related duties as required.

Incumbents continuously monitor assigned areas of research and development; identify individual inventions, analyze and evaluate the Patentable and/or licensing stature of the identified invention or other property; evaluate records of inventions, prepare invention and/or licensing summaries, and make initial recommendations regarding appropriate patent or licensing actions; review the contents of technical reports, papers and engineering drawings proposed for publication, decide whether proposed actions would have any substantially adverse effects upon filing and/or licensing options, and, if so, initiate discussions with the authors to determine whether publication should be withheld or abridged; and maintain current knowledge of technical advances at the national and international levels; keep abreast in depth of relevant laws, rules and regulations respecting inventions and their patenting and/or licensing in the United States and selected foreign countries.

Incumbents may in special situations be required to write full patent applications including definitive claims, to consider the impact of formal action taken upon the patent applications, and to develop and provide technical bases and data for reviewing their formal rejections or objections.

The Patent Advisor series consists of three levels with the distinction between levels based on the scope and complexity of functions, the degree of delegated decision-making authority for interpreting and implementing University policies and the degree of supervision exercised.

Class Concepts

Patent Advisor III

Under direction incumbents perform highly specialized patent and/or intellectual property licensing work that requires advance knowledge of a physical sciences’ biological science or engineering. Assignments at this level regularly extend into technological disciplines remote from the incumbent’s original academic training and include cases of maximum technological, patent, and/or licensing complexity. Incumbents in addition to performing the range of duties outlined in the series concept may direct the work of lower level Patent Advisors.

Patent Advisor II

Under general supervision incumbents perform patent and/or intellectual property licensing work of more than average difficulty that requires a comprehensive knowledge of a physical science, biological science or engineering. Assignments at this level are usually related to the incumbent’s academic training. Incumbents typically prepare and prosecute patent applications and/or negotiate license agreements; evaluate sponsor obligations and alleged private off-the-job inventions of employees and recommend formal disposition of titular rights. Incumbents may advise on University policy and may perform investigatory work in connection with potential and alleged patent infringements. Incumbents in addition to performing the range of duties outlined in the series concept may provide guidance and assistance to lower level Patent Advisors.

Patent Advisor I

Under supervision incumbents perform the range of duties outlined in the series concept.

Minimum Qualifications

Applicants for positions in the Patent Advisor series are expected to possess the skills, knowledges, and abilities essential to the successful performance of the duties assigned to the positions.

Note: Specific qualification requirements are approved for positions by the Personnel Manager in accordance with the provisions of Staff Personnel Policies 270.8 and 210.9.