Principal Research Specialist

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Principal Research Specialist

The candidate will responsible for the management and administration of a portfolio of intellectual property (IP). Will be responsible for meeting with faculty to educate them about the commercialization process and to encourage new invention disclosures, developing marketing and commercialization strategies, assisting with patent portfolio management, and negotiating contracts with industrial partners, including license agreements, non-disclosure agreements, and material transfer agreements in support of technology transfer and acquisition of sponsored research. Will enter license agreements and associated data into a database management system and prepare reports as required. Responsible for using superior judgment to ensure all transactions comply with pertinent policies, regulations and laws associated with the management of intellectual property. Evaluate assigned invention disclosures by: Collecting and assessing information relevant to patent and market feasibility. Overseeing government reporting obligations and ensuring compliance. Discussing the invention with inventor(s) to understand the technology and its potential uses. Analyzing commercial value of research/invention and its patentability. Determining whether outside review is appropriate and communicating with the external reviewer. Reporting the results of the assessments with the inventor(s) and college. Developing strategies and/or plans for commercialization. Acting as liaison between researcher, university, outside council, and governmental agencies. Implement marketing strategies and/or plans by: Communicating strategies with inventor(s) and their college(s). Identifying prospective licensees and initiating contact. Preparing marketing materials. Preparing and presenting solicitation materials. Drafting and negotiating license agreements. Coordinate and oversee various patent-related activities to protect the University IP by: Identifying appropriate patent counsel. Facilitating discussions between counsel and UI inventor(s). Reviewing communications from counsel. Collaborating with counsel to ensure contracts align with university strategic plans, policies, and procedures. Evaluating patent office actions and providing input to the prosecution in situations of patent infringement. Manage portfolio of existing licenses by: Ensuring mechanisms are in place to track due diligence requirements and actions. Working with the University Research Office’s Financial Specialist to monitor receipt of minimum annual royalties, license fees, milestone fees, and patent reimbursement costs. Maintaining a working relationship with licensees to ensure continued performance and a healthy relationship. Drafting and negotiating contracts and license amendments as appropriate. Educate community about IP and Technology Transfer by: Giving presentations to various department meetings, classes, etc. Meeting new research faculty within about 6 months of arrival. Meeting informally with research faculty. Consulting with faculty on IP issues including ownership, conflict of interest, protection, valuation and licensing. Contribute to team effort by: Attending professional development conferences, workshops, seminars, and training. Performing other duties as assigned.

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