Licensing Manager, #9620
Case Western Reserve University

Job Info

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POSITION OBJECTIVE

Working independently, the licensing manager is responsible for managing Case Western Reserve University invention disclosures (cases) submitted by faculty, staff and students, including the identification, evaluation and disposition of such inventions; obtaining appropriate intellectual property protection ; vigorously marketing technologies developed in the Case Western Reserve University School of Engineering, College of Arts and Sciences and School of Medicine, to industry; identifying and creating new start-up opportunities at Case Western Reserve University, and drafting and negotiating complex licensing agreements with industry; identifying sources of industry research sponsorship; participating in the development of initiatives to inform and educate university faculty, staff and students about technology transfer and nurturing a culture of entrepreneurship at Case Western Reserve University.

ESSENTIAL FUNCTIONS

1. Assess and when appropriate, commercialize Case Western Reserve University inventions across a portfolio of projects; primary activities include technology evaluation, patent filing and prosecution decisions, pre-marketing, corporate communications, and complex negotiations. Handle or manage the prompt and competent completion of analyses, evaluation, handling, disposition, and commercialization of inventions by university faculty, staff, and students, including the successful licensing or optioning of intellectual property rights. Work with university-approved patent prosecution legal services to construct and efficiently manage a portfolio of patents related to university inventions. Assist upper management in maintaining a roster of patent attorneys with experience and specialties relevant to the university's technology transfer efforts. (17%)
2. Identify and create new start-up company opportunities at the university, including selection of company management, applying for external funding, and negotiating License Agreements to the new company. Seek, develop, and maintain relationships with potential external licensing partners in industry, government, and the not-for-profit sectors. Structure and negotiate complex licensing agreements for commercialization of university-developed technologies. Coordinate the legal review and approval with the Office of General Counsel where appropriate. (17%)
3. Develop a technology specialization, becoming a technology commercialization expert in a particular technology focus area (for example, diagnostics, medical imaging, stem cells, drug discovery, medical devices, etc.). Oversee the follow-up and collection of royalties and other payments from active licenses. Foster and manage internal and external relationships relevant to disclosures and licensing. (16%)
4. Review and negotiate other non-license agreements within the office, including Confidentiality Agreements, Release Agreements, Royalty Split Agreements, Inter-institutional Agreements, Data Use Agreements, and intellectual property sections of Sponsored Research Agreements and Service Agreements, including the coordination of legal review and approval by the Office of General Counsel where appropriate. (10%)

NONESSENTIAL FUNCTIONS

1. Identify and encourage corporate sponsorship that can help develop technologies and lead to eventual licensing partners. (5%)
2. Assist in developing up-to-date technology transfer databases and reports for the university. (5%)
3. Produce technology transfer education and support programs for faculty, students, and staff at the university, including seminars, lectures, and guest teaching in Case Western Reserve University classes. (5%)
4. Ensure faculty adherence to the university's IP Policy and work to resolve unforeseen IP related issues or disputes. (5%)
5. Oversee licensing associates training and handling of Material Transfer Agreements. (5%)
6. Assist senior licensing managers, directors, and executive director with specific projects and functions as they arise. (2%)
7. Mentor and train licensing associates and other licensing managers in technology transfer job related tasks and skills. (2%)
8. Draft new and/or revised policies related to the university's technology transfer and new enterprise development activities. (2%)
9. Assist with grant writing and new enterprise development activities. (2%)
10. Manage relationships and review of contracts with contract research organizations. (2%)
11. Review IP sections of contracts from other departments around campus (Sponsored Projects, School of Medicine, Mandel School of Applied Social Sciences, etc.). (3%)
12. Perform additional duties as assigned. (2%)

CONTACTS

Department: Continuous contact is necessary with the executive director of Technology Management, senior licensing managers, other licensing managers and licensing associates within the office.

University: Continuous contact is expected with faculty, students, and staff in all units of the university who are directly relevant to technology transfer activities.

External: Regular contact with external partners in industry, government, not-for-profit sectors who are relevant to technology transfer at CWRU is also essential. These contacts include: patent/intellectual property attorneys, marketing consultants, persons related to actual or potential university start-up companies such as investors, candidates for positions in such start-up companies, and professional support functions such as law, accounting, real estate or insurance.

Students: Frequent contact is expected with students who are directly relevant to technology transfer activities.

SUPERVISORY RESPONSIBILITY

No direct supervisory responsibility. Coordinate and oversee, where appropriate, licensing associates, student workers or interns, and/or administrative staff.

QUALIFICATIONS

Experience: 4 to 8 years of experience in the appropriate fields: technical sales/marketing and/or business development involving early-stage technology At least 3 years of experience in a research or university setting, working with or processing agreements including, Licenses and Options, Material Transfer Agreements and CDAs is preferred. Strong working knowledge in licensing in a research or university setting; and of intellectual property protection methods, contract law, government laws and regulations related to technology transfer.

Education/Licensing: Master's degree in science, business, or engineering is required.

REQUIRED SKILLS

1. Must possess excellent analytical, marketing, organizational, communications, negotiation skills, be detail-oriented, and able to manage complex and demanding relationships with tact, discretion, and good humor.
2. Must demonstrate knowledge of the disciplines relevant to CWRU's technology transfer programs in life sciences as well as evidence of creative problem-solving, entrepreneurship, initiative, and intellectual curiosity.
3. Ability to work energetically and produce results over extended periods is essential.
4. Ability to meet consistent attendance.
5. Ability to interact with colleagues, supervisors, and customers face-to-face.

WORKING CONDITIONS

The position is based in an office environment on campus. It will require substantial moving around the University and Cleveland region, including frequent contacts with others on campus in their locations, and contacts with professionals and others in Cleveland. Travel is required.

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