Licensing Officer

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Licensing Officer
Deadline : 04-15-2018.
The candidate will under the direction of the Director, the Licensing Officer is responsible for implementing formal technology transfer of firm's technologies and intellectual property to the industrial sector in assigned areas (approximately 1/3 of the portfolio) to facilitate the development of commercial products and services that are based on firm's research and benefit the public. Activities will involved in the process include, establishing productive relationships with firm's innovators and firm's licensees, evaluating new technology disclosures for commercial potential, monitoring patent prosecution, actively and creatively marketing campus technologies, and negotiating and monitoring licensing agreements. The Licensing Officer is expected to generate and manage licensing revenue and patent cost reimbursement. Evaluation of Invention DisclosuresUsing skills as a seasoned, experienced technology transfer professional with an in-depth understanding of the field, perform the following duties with good judgment, with respect to complex inventions and/or working within complex legal and business landscapes: Evaluate commercial potential and formulate licensing strategy for a substantial portfolio of complex inventions that are relevant to a diverse array of markets. Reviews complex funding agreements to identify all intellectual property obligations (including those to the federal government) owed to research sponsors or center members, and assures all such obligations are timely and appropriately fulfilled. Evaluate potential licensees and development teams to evolve licensing strategies, considering the market data, interest and longer term public benefit. Determine the patentability of firm's inventions within assigned portfolio and assure the legal rights of The Regents, particularly patent rights and copyrights, are protected and preserved for inventions and software under the officer's management. When appropriate, recommend to the Associate Director the need to authorize and review patentability opinions and patent searches by patent attorneys. As appropriate, conduct training with faculty and other researchers regarding intellectual property/technology transfer policies, procedures and best practices. Guide faculty new to firm's through technology transfer process. Provides consultation to University faculty and staff on issues related to invention disclosure, patenting and licensing. Provide networking contacts to start up entrepreneurial companies, faculty and students. Advise on intellectual property clauses, contracts and agreement in complex sponsored and collaborative research agreements. Maintains contact with individual inventors within assigned technology portfolio to keep them apprised of the prosecution and licensing status of their inventions. Markets new technologies and inventions to potential industrial partners through direct contact with inventors, independent research, professional networking, and various databases, develops a licensing and marketing strategy for assigned disclosures, including the identification of potential markets for assigned disclosures, the determination of an appropriate licensing strategy and the proactive identification of potential licensees for assigned invention disclosures. Determines licensing interest by initiating contact with companies and/or responding to company inquiries. Prepare or coordinate preparation of appropriate marketing materials for such contacts. Evaluate complex potential licensees and development teams to evolve licensing strategies considering the market data, interest and longer term public benefit. Obtains and evaluates business and marketing plans of potential licensees. Evaluates specific potential licensees for suitability and, if multiple potential licensees request a license, manages multiple requests consistent with UC policy and practices. Select appropriate company or companies with whom to negotiate licenses. Oversees the activity of outside patent attorneys prosecuting intellectual property rights on behalf of the University for assigned disclosures, including: Provides recommendations to the Associate Director concerning filing patent applications on assigned disclosures. Upon authorization by the Associate Director, gives initial instructions to patent attorneys and monitor patent prosecution to ensure that adequate and appropriate protection of commercially important aspects of the invention is sought. Reviews invoices from attorneys to verify that work has been done within cost estimates/caps and that charges are reasonable. Recommends payment of reasonable fees and resolve billings that exceed estimates, caps or otherwise reasonable levels. Obtains prior approval of Associate Director for payment of invoices that exceed certain thresholds established by TIA. Monitors and periodically evaluates whether or not to continue prosecution of individual patents and, when appropriate, request authorization to terminate prosecution. Negotiate complex license, option and other agreements related to the licensing of substantial invention portfolio. Develops negotiation strategies, including business, financial and due diligence terms. Gather, analyze, prepare and provide input on exceptions to policy, when appropriate and necessary to fulfill office objectives. Work with UC general counsel during legal review of proposed complex license agreement prior to Director's execution of license agreement. Assure licensees meet all complex licensing obligations and intervene or initiate corrective action when commitments are not met. Identifies and documents terms of agreements to be actively enforced, and ensures that appropriate administrative and support staff are informed of and understand these terms, and that the agreement is appropriately entered into tracking databases. Resolves problems arising after execution, send notices of default and termination, re-negotiate terms as appropriate. Drafts and negotiates amendments to the terms of license and option agreements and submit amendments to the Director for execution. Manages the process of collecting sales/royalty reports and payments from licensees. Identifies and resolves collection issues or unexplained or diminishing royalty streams. Recommends, as appropriate, that the General Counsel take legal action to bring licensees into compliance with the terms of agreements or to abate infringement by non-licensees. Serve on campus committees in areas related to intellectual property licensing. Participate in curriculum development and teaching of campus training programs related to functional areas. Other special projects as assigned by the Director or Associate Director.

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