Licensing And Specialist

Department:
Innovation & Commercialization Location: Non-Campus Other Time Type:
Full time Worker Type:
Regular Job Req ID: R104061 Minimum Requirements:
Licensing and Commercialization Specialist II - Bachelor's degree and 2 years of relevant experience. An equivalent combination of education and experience may be used on a one-to-one basis to offset the educational requirements. Grade 9 Min: 73,600 Mid 92,000 Max 110,400
Licensing and Commercialization Specialist III - Bachelor's degree and 4 years of relevant experience. An equivalent combination of education and experience may be used on a one-to-one basis to offset the educational requirements. Grade 10 Min: 82,800 Mid 103,500 Max 124,200 Position Description:
Licensing Manager manages the protection and commercialization of technologies and other intellectual property (IP) coming from the research and clinical activities of the University of Louisville (UofL). Specifically, the position will be accountable for reviewing research disclosures and identifying protectable and commercially viable inventions, marketing those innovations to potential partners, developing commercialization strategies, negotiating, and maintaining license and related agreements on behalf of the University, assisting with monitoring for agreement and funding compliance, assisting with day-to-day operations of the office, and maintaining overall relationships with faculty. This position may supervise and/or serve as team-lead for other employees as needed. Position will specifically manage innovation development related to life sciences and sometimes other technology areas and will problem solve to advance the impact of UofL research to the marketplace and beyond.
Position will be filled at the Licensing and Commercialization Specialist II or Licensing and Commercialization Specialist III level based on Candidate Qualifications. Essential Duties and Responsibilities Establish and maintain relationships with researchers, and conduct education and outreach for the office about the technology transfer and intellectual property (IP) commercialization processes for UofL faculty, staff and the community through seminars, workshops, class presentations, events, and other mechanisms. Advise on general patent and commercialization matters. Advise researchers seeking additional funding and resources to further develop University innovations and discoveries. Evaluate commercial potential of invention disclosures with responsibility for prior art and patentability analyses to make appropriate and informed decisions about patent application filing, prosecution, and responses to office actions. Along with others provide information and strategy to outside counsel for intellectual property protection. Support maintenance of IP records and dockets; monitor patent expenses, scrutinize invoices with outside law firms. Assess and advise on existing IP portfolio for continued viability. Develop commercialization and marketing strategies for UofL technologies and inventions. Develop non-confidential marketing abstracts and other materials for marketing outreach. Identify and maintain relationships with companies interested in licensing UofL intellectual property. Conduct marketing campaigns for UofL innovations. Lead license and option agreement negotiations. Review, initiate, and manage agreements relating to UofL IP including patent licenses, copyright licenses, trademark licenses, inter-institutional agreements, collaboration agreements and other strategic alliance agreements. Maintain a portfolio of contacts with potential partners, potential licensees and key organizations that will benefit and advance university innovation and entrepreneurship strategic goals. Support other UofL offices and staff on innovation related matters and issues. Review and negotiate agreements containing intellectual property terms on behalf of other UofL administrative offices such as office of sponsored programs and purchasing, or such agreements as assigned by counsel's office. Provide language review assistance, guidance, and training for agreements as needed and requested. Work with the Office of the General Counsel, Finance/Accounting, Office of Sponsored Programs, and other appropriate offices in accordance with University Policy. Assist and advise in new venture formation by identifying resources available to assist in successful University start-up formation and launch, including building a network of investors, grant funders, and entrepreneurs. Assist with compliance with UofL policies, Commonwealth laws, Federal laws, regulations, and policies as applicable. Monitor agreements for conflicts of interest or conflicts of obligation; facilitate compliance obligations under federal grants, Bayh-Dole Act, and UofL's mission. Serve as an effective ambassador and representative in local, regional, and national meetings as needed. Respond quickly and professionally to inquiries from outside parties to further develop partnerships and collaborations. Represent the University at conferences, to corporate partners, government agencies, and other organizations. Represent UofL Innovation advancement through service on committees, such as review committees, professional organization service, and participation with entrepreneurial-focused groups. Assist in matters of policy, SOP or guideline development, or procedures and best practices related to IP commercialization.  This role may require access to technology, data and software source code that is subject to US export controls. An offer of employment is contingent upon verifying U.S.-person status or obtaining the necessary export control licenses to perform the job functions. Other duties as assigned. May require occasional travel between university buildings to meet with others. May require occasional travel to offsite meetings and conferences. Preferred Qualifications Master's degree or Doctorate in a life science. Ability to manage a complex portfolio of diverse technologies. Ability to carry multiple, extended projects concurrently through to completion. Broad knowledge to facilitate working with inventors across multiple disciplines including life science, physical science, arts and humanities, and engineering. Ability to analyze scientific papers and to present ideas, legal and scientific reasoning, and action plans to ensure appropriate follow through. Experience successfully negotiating sophisticated transactions. Strong communication, persuasive, and interpersonal skills with an ability to distill and articulate technical concepts to communicate effectively with inventors, administrators, licensees, partners, and outside patent counsel across a broad range of topics. Collaborative and solution minded attitude with ability to effectively work at various levels from highly detailed to highly strategic inside and outside of the organization. General understanding of research administration, the Bayh-Dole Act and iEdison compliance. Experience successfully negotiating license agreements. Experience negotiating, managing, and executing related research support agreements such as Nondisclosure Agreements, Material Transfer Agreements, and Collaboration Agreements. Experience in the invention disclosure and invention assessment processes. Experience in working with a broad range of customers including faculty, students, and industry representatives. Strong analytical skills with the ability to deal with complex problems, collect and analyze data, establish facts, draw valid conclusions, and implement solutions. Experience commercializing university technologies or similar experience in a business setting. CLP and/or RTTP Certification Competencies General understanding of the patent process and patent law. Understanding of Technology Transfer and commercialization best practices. Understanding of academic environments and policies. Adaptable and proficient at managing competing priorities. Project Management - organized, task oriented, ability to delegate and follow up. Proactive - anticipates and plans for problems before they arise. Flexible - ability to change directions as needed for the good of the department or organization. Service Excellence - responsive, informs constituents of process, pleasant to work with, educates and provides timely, accurate information. Organized - manages time effectively, keeps tasks appropriately prioritized. Critical Thinking - ability to think through issues and identify appropriate options. Interpersonal - can build effective, strong working relationships with employees, colleagues, management and vendors through trust, communication, and credibility. Excellent Communication Skills - excellent written and oral communication skills with the ability to effectively interface with university and regional stakeholders. Compensation will be commensurate to candidate experience. Equal Employment Opportunity
The University of Louisville is an equal opportunity, affirmative action employer, and is committed to providing employment opportunities to all qualified applicants without regard to race, sex, age, color, national origin, ethnicity, creed, religion, disability, genetic information, sexual orientation, gender, gender identity and expression, marital status, pregnancy, or veteran status . If you are unable to use our online application process due to an impairment or disability, please contact the Employment team at or . Assistance and Accommodations
Computers are available for application submission at the Human Resources Department located at 215 Central Avenue, Ste 205 - Louisville, Kentucky 40208.
If you require assistance or accommodation with our online application process, please contact us by email at or by phone .