Job Description

University of Utah Job Description

Job Summary

Manages intellectual property created at the University of Utah and assists in the management of the Technology Transfer operations for a specific area of development including Biomedical/Biotechnology Sciences, Physical Sciences, Engineering or Computer/Communications Technology.

Qualifications

Bachelor’s degree in a Life Science, Physical Science, Engineering, Computer Science, or a related field required with advanced degree or equivalency (one year of education can be substituted for two years of related work experience) preferred. Five years full-time experience in industry, marketing or business development; and demonstrated effective communication and human relation skills required. Entrepreneurial, communication and interpersonal skills are critical for success in this position.

Work experience in an industrial field specific to area of assignment (Pharma, Biomedical/Biotechnology, Diagnostics, Physical Sciences, or Computer Industry) is strongly preferred.

Previous university administrative or research experience, or familiarity with the university environment preferred. Work experience in a university or industry technology transfer office preferred.

Applicants must demonstrate the potential ability to perform the essential functions of the job as outlined in the position description.

Disclaimer

This job description has been designed to indicate the general nature and level of work performed by employees within this classification.  It is not designed to contain or be interpreted as a comprehensive inventory of all duties, responsibilities and qualifications required of employees assigned to the job.

Essential Functions

1. Independently manages a portfolio of 75-100 existing licenses to generate an annual income of $1,000,000 from royalties and fees. Ensures compliance of licensee with the terms and conditions of the agreement. Negotiates amendments as needed.
2. Evaluates the patentability of 75-100 new inventions per year by selecting and using outside patent counsel to prepare patent applications, works with inventors, using on-line databases to identify prior art and competing patents. Independently selects 20-30 of the inventions for patenting (cost per patent: $18-28,000). Develops a patenting strategy.
3. Independently evaluates the commercial potential of 75-100 new inventions per year by identifying new uses, markets, market size, competing technologies through the use of personal knowledge of emerging technologies, information gleaned from experts and on-line databases. 4. Independently develops a licensing strategy for each of the 20-30 selected technologies. Identifies qualified companies and presents new technology to potential licensees.
4. Proposes financial terms such as up-front licensing fees, running royalty rates, and other terms for each arrangement.
5. Independently implements the patent and licensing strategies by engaging 15-20 potential licensees in negotiations for licenses to the selected new inventions. Successfully negotiates terms in 15-20 licenses (average 20 pages) and options per year, which will bring in annual income of $100,000 in fees plus equity in start-up companies. Using the company’s business plans, negotiates appropriate due diligence milestones to ensure that the licensee is required to make an effort sufficient to commercialize the technology.
6. Independently manages the on-going patent prosecution by outside patent counsel (usually in consultation with the licensee) to assure that the patent strategy is followed, expenses are controlled, and patent, copyright, trademark and other intellectual property rights are properly protected. Manages the interaction between the patent attorneys and inventors to ensure that high quality patents are obtained.
7. Proactively identifies potential problems with inventors, sponsors, potential licensees and licensees. Proposes, promotes and/or negotiates solutions or agreements.
8. Identifies situations with licensees, which require legal action. Working with the Office of the General Counsel, analyzes the situation and recommends appropriate legal action such as termination, arbitration or litigation. Where possible, negotiates settlements or, if necessary participates in arbitration or litigation.
9. Participates in national meetings of licensing associations as speaker, workshop leader, committee member, officer, etc.

Problem Solving

The incumbent has the authority to formulate and implement procedures regarding processes required to successfully achieve University technology transfer objectives. He/she may act independently in performing all essential functions and duties. The incumbent will supervise the work of a Licensing Associate and/or intern with an advanced degree, and one or more support staff.

Comments

Work Environment and Level of Frequency typically required

Nearly Continuously: Office environment.

Physical Requirements and Level of Frequency that may be required

Nearly Continuously: Sitting, hearing, listening, talking.

Often: Repetitive hand motion (such as typing), walking. 

Seldom: Bending, reaching overhead.