Principal Counsel, Intellectual Property

Oakland, CA
Location: OaklandFull Time
Job ID: 63696
Job Posting

For UCOP internal applicants, please login to the internal candidate gateway at: Jobs at UCOP

Position Base: Oakland
Location: UCOP - Franklin Building

UC OFFICE OF THE PRESIDENT

At the University of California (UC), your contributions make a difference. A world leader producing Nobel and Pulitzer prize recipients with over 150 years of groundbreaking research transforming the world. Choose a career where you can leverage your knowledge, skills and aspirations to inspire and support some of the greatest minds in the world, and those who will follow in their footsteps. Working at the University of California is being part of a unique institution, and a vibrant and diverse community. At the University of California, Office of the President, we propel our mission through impactful work locally, in government centers and systemwide. We are passionate people, serving the greater good.

The University of California, one of the largest and most acclaimed institutions of higher learning in the world, is dedicated to excellence in teaching, research and public service. The University of California Office of the President is the headquarters to the 10 campuses, six academic medical centers and three national laboratories and enrolls premier students from California, the nation and the world. Learn more about the UC Office of the President

DEPARTMENT OVERVIEW

The UC Legal Office of General Counsel (OGC) delivers ethical, timely, efficient and high quality legal services to the University of California ten campuses, five medical centers, and the Lawrence Berkeley National Laboratory, as well as to the Board of Regents, the President, the Chancellors and other officers of the University. Its services include prosecuting and defending litigation, drafting and negotiating agreements, providing advice, counsel and interpretation of laws, regulations and policies, and assisting with development of effective compliance and risk mitigation strategies to facilitate the University's complex operations. Members of our team are committed to carrying out UC's organizational philosophy to provide the best possible services in support of its mission: teaching, research and public service.

POSITION SUMMARY

The Principal Counsel of Intellectual Property is a recognized specialist in copyright and trademark law and also has substantial experience in negotiating and drafting technology transfer agreements, patent licenses, and other intellectual property-related transactions. This position is responsible for handling and advising on complex transactions. The responsibilities include:
  • legal consultation and advisory work regarding: (a) intellectual property-related matters with a focus on copyright and trademark rights throughout the University of California system; (b) complex domestic and international transactional matters involving multiple forms of intellectual property, including copyrights, trademarks, and patents; (c) intellectual property litigation; (d) intellectual property prosecution to obtain intellectual property protection; and (e) other intellectual property-related matters and disputes;
  • reviewing and negotiating intellectual property license agreements, research and development collaborations, software license agreements, and other agreements involving intellectual property rights;
  • acting as liaison with outside legal firms and/or representing the University in intellectual property litigations and before administrative agencies; and
  • advising on complex intellectual property matters and interpreting the law in areas of substantial ambiguity in all areas of the University's academic, research, health, and innovation enterprises. By practicing the Office of General Counsel's established Values for Principles of Community, the Principal Counsel demonstrates an active and engaged commitment to supporting and advancing diversity.

Responsibilities

80% Client Service:
  • Understands that UC is a large, complex organization with many internal and external clients.
  • Collaborates with colleagues at the Office of the President or campus/medical center locations to develop and modify practices and procedures to conform with changing legal requirements.
  • Establishes effective relationships with key internal and external constituencies. Recognizes strategic needs of organization and proactively builds relationships with appropriate stakeholders to ensure successful outcomes.
  • Determines whether a program or activity impedes or advances the University's goals.
  • Advises and renders opinions to the General Counsel, the Deputy General Counsel and other senior leaders with respect to the legal implications of establishing or changing policy.
  • Provides high quality, timely and solution-oriented counsel as legal specialist in Oakland on highly complex legal matters, by means of effective research and communication of advice, both written and oral.
  • Establishes legal and compliance policies and procedures that meet applicable regulatory requirements and tests the operative effectiveness of those policies and procedures and conducts training as needed.
  • Directly negotiate matters on behalf of The Regents.
  • Demonstrate and promote appropriate risk tolerance.
  • Prioritize objectives and ensure service according to those priorities.
  • Advises officers and senior managers of corporate legal responsibilities.
  • Serves as point person in OGC to communicate and coordinate with internal clients on contracts and other legal issues.
  • Delegates work effectively to maximize efficiencies.
  • Provides clear expectations and mentors legal support staff to establish strong commitment to teamwork and to meet expected levels of productivity and accuracy.
  • Ensures accurate record keeping in compliance with OGC data quality protocols.
  • Complies with delegations of authority for committing University funds.

15% Collaboration & Communication:
  • Engages in professional, candid, timely, practical, and respectful communications that are constructive and promote University goals, legal compliance and resolution of issues.
  • Appropriately disseminates information to the Office of General Counsel attorneys and Legal Practice Support, senior leadership of the University and outside counsel.
  • Meaningfully contributes toward the success of initiatives of others by providing appropriate legal services (including advice) or deliverables in a timely, accurate, practical and respectful manner.

5% Resource and Financial Management:
  • Develops strategic goals and objectives to achieve accountability and efficient stewardship of University resources (operational, financial, and human), in a manner consistent with Systemwide objectives and initiatives.
  • Comply with record keeping effort designed to monitor resource allocation, including timesheets.
  • Comply with delegations of authority for contracting, purchasing and committing University funds.
  • Appropriately delegate work to maximize efficiency of University resources and provide opportunities for growth of the legal staff.
  • Contribute to the development of quality management data by adhering to OGC data tracking protocols.

Experience
Required Qualifications
  • Minimum of 8 years of deep experience in intellectual property matters, especially negotiating and drafting transactions relating to copyrights, trademarks, and other intellectual property matters.

Skills and Abilities
Required Qualifications
  • Deep knowledge in copyright and trademark law.
  • Substantial experience in intellectual property licensing and similar intellectual property transactions.
  • Excellent written and oral communication skills and ability to create and deliver effective materials and/or presentations appropriate to a particular audience.
  • A proven collaborator with a positive attitude and strong interpersonal communication skills, including proven ability to actively listen, negotiate, persuade and educate.
  • A trusted partner with senior management and a diverse spectrum of clients.
  • In-depth understanding of highly complex legal issues and ability to foresee implications in specialty area, even when ambiguous or hidden.
  • Proven ability to identify, explain and balance business and legal risks.
  • Proven skills to gain trust and build credibility with a broad group of colleagues and clients, to include senior leaders.
  • In-depth and proven decision-making ability, even when unpopular, earning credibility and support from colleagues.
  • Demonstrated commitment to the highest ethical standards.
  • Proven ability to maintain confidentiality and exercise discretion and tact when handling sensitive or potentially sensitive issues.
  • Advanced research skills; keeps informed on changing legislation and case law developments affecting overall operations as they relate to the area of specialty.
  • Advanced skills in collaboration, facilitation, and strategic and creative thinking.

Preferred Qualifications
  • Experience in UC or other university in-house legal counsel.
  • Experience in private law firm; experience as counsel to public agency; and/or experience with regulatory, administrative or policy-making bodies.
  • Experience with patent law, including being registered to handle patent matters before the U.S. Patent and Trademark Office.
  • Advanced skills in project management, and facilitating policy review and changes.
  • Demonstrated interest in learning new legal disciplines, and the legal and business talent to deploy new knowledge areas with accuracy and efficiency.

Education
  • Advanced degree in a related area is required

Licenses and Certifications
Must be a member in good standing of the California Bar.

Travel Requirements
5% Occasional business travel

SPECIAL CONDITIONS

The person hired will be required to reside within California and report to work on-site at UC's Office of the President (UCOP) located in Oakland, CA on a regular basis. Current policy requires that a new employee work on-site at least two days a week on Tuesdays and Wednesdays ("anchor days"). In exceptional circumstances, approved by the General Counsel, candidates residing in or willing to relocate to California may be considered for a fully remote work arrangement.

SALARY AND BENEFITS

Job Title: Counsel 4
Job Code: 000201
Salary Grade: Grade 29

Payscale: $220,000 - $255,000 annual, commensurate with experience
Full Salary Range: $165,200 - $333,800 annual

The University of California, Office of the President, is required to provide a reasonable estimate of the compensation range for this role. This range takes into account the wide range of factors that are considered in making compensation decisions including but not limited to experience, skills, knowledge, abilities, education, licensure and certifications, and other business and organizational needs. It is not typical for an individual to be offered a salary at or near the top of the range for a position. Salary offers are determined based on final candidate qualifications and experience. The full salary range shows the growth potential for this position and the pay scale is the budgeted salary or hourly range that the University reasonably expects to pay for this position.

Benefits: For information on the comprehensive benefits package offered by the University visit: Benefits of Belonging

ADDITIONAL INFORMATION

HOW TO APPLY

Please be prepared to attach a cover letter and resume with your application.

APPLICATION REVIEW DATE

The first review date for this job is March 4, 2024. The position will be open until filled.

CONDITIONS OF EMPLOYMENT

Background Check Process: Successful completion of a background check is required for this critical position. Background check process at UCOP

Smoke Free Work Environment: The University of California, Office of the President, is smoke & tobacco-free as of January 1, 2014. UC Smoke & Tobacco Free Policy

As a condition of employment, you will be required to comply with the University of California Policy on Vaccination Programs, as may be amended or revised from time to time. Federal, state, or local public health directives may impose additional requirements.

EEO STATEMENT

The University of California, Office of the President, is an Equal Opportunity/Affirmative Action Employer. All qualified applicants will receive consideration for employment without regard to race, color, religion, sex, sexual orientation, gender identity, national origin, disability, age or protected veteran status. EEO/AA Employer UC Nondiscrimination Policy

The University of California, Office of the President, strives to make this job board accessible to any and all users. If you have comments regarding the accessibility of our website or need assistance completing the application process, please contact us at: Accessibility or email the Human Resource Department at: [email protected].

To apply, visit https://careerspub.universityofcalifornia.edu/psp/ucop/EMPLOYEE/HRMS/c/HRS_HRAM.HRS_APP_SCHJOB.GBL?Page=HRS_APP_JBPST&Action=U&FOCUS=Applicant&SiteId=19&JobOpeningId=63696&PostingSeq=1

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