Description:

Job Summary:
A Public Land-Grant Research University is excited to begin the search for a Senior Technology Licensing Officer! Having wide-ranging experience, the Senior Technology Licensing Officer uses intellectual property, technology licensing, transfer concepts, and organization objectives to resolve the most complex issues with organization-wide impact. Works on complex issues with little or no precedent where analysis of situation or data requires an in-depth evaluation of variable factors. Exercises judgement in selecting methods, techniques, and evaluation criteria for obtaining results. Works with faculty to determine developmental strategies for technologies and determine pathways for protection, as well as formulates patent strategies and coordinates with external patent counsel.

Essential Functions:
Essential Functions
  • Identifies and assesses new technology commercialization opportunities arising from Auburn, including evaluating the commercial potential by identifying new uses, market segments, market size, and competing technologies using personal knowledge of emerging technology, information from experts, and on-line databases. Conducts patent searches and freedom to operate for new technologies.
  • Synthesizes relevant information and independently develops marketing and licensing strategies for technologies in the AU portfolio, prepares non-confidential descriptions of technologies, and markets technologies to identify potential licensing opportunities and alternative applications.
  • Negotiates license deal terms including equity terms and conditions, when appropriate. Leads business development and/or special project activities such as determining patent strategies for new inventions. Assist the Director of Commercialization in non-management strategic activities.
  • Formulates intellectual property protection strategies, including patenting when appropriate. Manages on-going patent prosecution with outside patent counsel to assure the patent strategy is followed. Analyzes the impact of proposed and allowed patent claims on the commercialization opportunity.
  • Manages and maintains on-going relationships with licensees; monitors the diligence of licensee towards commercializing the licensed technology. Negotiates license amendments as needed, and addresses matters of contract compliance to ensure compliance with IPX and AU procedures and policies.
  • Develops positive relationships with inventors with the intention of identifying attractive AU technologies for licensing to start-up or established companies. Engages with companies to determine their needs and identifies applicable AU technologies for licensing. Engages in activities that promote or develop and enhance the formation of startup companies from AU technologies.
  • Offers guidance to research faculty on important research and technology innovation needs sought by industry and government entities as well as trends in specific fields of research. Provides feedback and suggestions to principal investigators on their extramural proposals with the goal of increasing such proposals' competitiveness especially with regards to creating
  • innovative scientific and technical solutions.
  • Educates stakeholders about the commercialization of research process. Advises University inventors and potential industry licensees regarding University intellectual property policies and related technology commercialization issues.
  • Works with IPX's Commercialization Intern Program and supervises the interns' work on specific commercialization projects.

Supervisory Responsibility:
  • May be responsible for training, assisting or assigning tasks to others. May provide input to
  • performance reviews of other employees.

The above essential functions are representative of major duties of positions in this job classification. Specific duties and responsibilities may vary based upon departmental needs. Other duties may be assigned similar to the above consistent with the knowledge, skills and abilities required for the job. Not all of the duties may be assigned to a position.

Minimum Qualifications:
Minimum Qualifications
Education:
Master's degree in Life Sciences or Physical Sciences with a combination of education and experience in one of the following options:
  • Master's degree with 8 years of experience
  • Juris Doctorate with 5 years of experience
  • Ph.D. with 5 years of experience.

Experience (yrs.) 8
Experience in one or more of the following: negotiating technology licenses or business contracts; developing and implementing commercialization strategies; market research, technical analysis, technical writing; or experience in IP (especially patents) evaluation. Experience in higher education environment, as well as effectively collaborating with a wide variety of industry and legal professional is desired.

Substitutions allowed for Education:
Indicated education is required; no substitutions allowed.

Substitutions allowed for Experience:
Indicated experience is required; no substitutions allowed.

Minimum Required Knowledge
  • Expanded knowledge of sciences or experience working with scientists across various disciplines
  • (preference to physical sciences, life sciences, agriculture sciences, high-tech, engineering or
  • advanced materials); research techniques; expanded knowledge of marketing, complex
  • commercialization strategies and complex deal structuring; technical analysis; technical writing;
  • product development; and intellectual property (IP) protection procedures. Knowledge and experience in drafting and negotiating all major and minor business contracts including technology option, license and equity-based agreements.

Minimum Skills, License, and Certifications
Minimum Skills and Abilities

Minimum Technology Skills

Minimum License and Certifications

Desired Qualifications:
Desired Qualifications
Certified Licensing Professional or Registered Technology Transfer Professional is desired.