Senior Licensing Associate

Washington, District of Columbia-Washington
Aug 19, 2020
Sep 18, 2020
Full Time
Reporting to Vice President and Chief Innovation Officer, the senior licensing associate independently manages a docket of technologies and has advanced level skills in technology marketing and licensing. The individual assumes primary responsibility for directly facilitating the technology transfer, development and commercialization of assigned technologies and faculty/departmental clients, assisting faculty and staff with the establishment of new commercialization agreements and business development relationships, supporting the establishment of R&D collaborations with industry partners to advance early stage discoveries, and managing relationships with key stakeholders internal and external the organization to proactively enable technology transfer. The Senior Licensing Associate will provide high quality services including invention receipt and capture, patentability assessment, market outreach (in-depth marketing support strategic and tactical), business development (structuring, drafting and negotiating commercialization agreements) and shall deliver the highest quality of customer service. This position will also manage other functions for the office as assigned in addition to technology licensing.


Specific Requirements and Preferences
Advanced Life Science degree (Required)

Minimum Work Experience

3 years

Specific Requirements and Preferences
Related experience (Required)

Required Skills/Knowledge
Must be a self starter capable of handling a docket of highly technical inventions, managing a complex patent portfolio, and marketing and licensing technology with minimal supervision.
Ability to identify and handle inventions in diverse fields outside of area of technical expertise.
Excellent interpersonal, oral, written and presentation skills.
Strong customer relationship skills, consensus building skills, and the ability to cultivate and maintain professional business partnerships.
Demonstrated ability to influence and negotiate with internal constituencies and external business partners.
Demonstrated ability to gauge basic business considerations and potential of technologies in a wide variety of scientific fields.
Advanced ability to establish priorities, take ownership and leadership of time-sensitive and complex projects from inception to completion, including developing strategy , implementation and execution of tasks.
Advanced ability to independently exercise sound judgment and decision making, creativity, problem solving, and critical analysis.
Advanced expertise and knowledge of contract and patent laws, university policies, industry and regulatory requirements.
Strong organizational skills and the ability to prioritize a variety of tasks and demands.
Corporate experience in an intellectual property sales/marketing role desired.

Functional Accountabilities

IP Protection & Management
1. Establish and maintain positive relationships with researchers, working with them to identify possible commercial applications of their discoveries, and encouraging them to complete new invention disclosures.
2. Review and evaluate invention disclosures for patentability and licensing potential. Identify commercial product scenarios and their unique features and benefits, including initial review , meeting with inventor(s), identifying industry reviewers, making contact, and sending material.
3. Follow-up, collect, and evaluate information, make recommendations and decisions that have significant impact, and consistently provide necessary notifications within set timelines.
4. Determine an invention's current stage of development and its future development path.
5. Establish a corresponding IP plan and strategy for the new technology.

Patent Prosecution Strategy
1. Review and assess the patentability of new inventions and assist in the decision to file patent applications.
2. Identify and satisfy the potential obligations specified in any associated contracts (including research agreements) or grants.
3. Develop marketing and licensing strategies that maximize technology commercialization potential.
4. Recommend a technology transfer path for new inventions (e.g., patent, waive rights, assign rights to inventors).
5. Oversee the filing and management of patent applications.
6. Manage patent-related activities including selection of attorney, determination of when and where to file patent applications, and management of an inventory of unlicensed cases from a financial perspective.
7. Oversee the multi-year patent prosecution.
8. If the IP plan does not patent the technology , execute a process for disclaiming, waiving, or abandoning/closing the invention disclosure.
9. When IP is co-developed and therefore jointly owned with other institutions, establish a collaborative management agreement with the other institutions that details which institution will take the lead in managing, patenting, marketing, and licensing the IP as well as how revenues and costs will be allocated.

IP Marketing & Business Development
1. Build industry relations with companies with the intention of creating collaborations and licensing technology rights, including identifying sources of funding for early stage IP .
2. Engage with companies to determine their needs. Communicate identified needs to faculty to help them understand where their research fits with these identified needs.
3. Perform targeted marketing/sales to companies and qualify potential licensing opportunities.
4. Develop and maintain relations with licensees and monitor progress in licensed product(s) development.
5. Represent the organization and interface with other entrepreneurship programs locally, nationally , and internationally .
6. Facilitate the creation of start-up companies to commercialize CNMC IP , where appropriate
7. Network with all these members of the technology research and commercialization ecosystem in order to establish relationships and rapport that results in research and commercialization.

Market Assessment & Financial Analyses
1. Evaluate the market potential of inventions, including market size and dynamics, the market need addressed by the invention, its competitive position and barriers to entering the marketplace.
2. Developing a marketing and licensing strategy for the IP (i.e., exclusive vs non-exclusive, field-of-use demarcations, licensing to start-ups versus established companies, etc.).
3. Develop financial models and projections.

Negotiate Agreements
1. Draft and negotiate material transfer agreements and licenses as well as other related contracts, such as option agreements, non-disclosures, stock purchases, and collaboration agreements when appropriate.
2. Work with the legal department to review the agreement and exceptions to the policy.
3. Coordinate any additional review by compliance committees such as COI.
4. Monitor license agreements, ensure compliance with diligence terms, prepare and execute amendments, process terminations, and participate in decisions on whether to pursue litigation.
5. Prepare progress reports as requested.

Organizational Accountabilities
Organizational Commitment/Identification
1. Partner in the mission and upholds the core principles of the organization
2. Committed to diversity and recognizes value of cultural ethnic differences
3. Demonstrate personal and professional integrity
4. Maintain confidentiality at all times

Customer Service
1. Anticipate and responds to customer needs; follows up until needs are met

1. Demonstrate collaborative and respectful behavior
2. Partner with all team members to achieve goals
3. Receptive to others' ideas and opinions

Performance Improvement/Problem-solving
1. Contribute to a positive work environment
2. Demonstrate flexibility and willingness to change
3. Identify opportunities to improve clinical and administrative processes
4. Make appropriate decisions, using sound judgment

Cost Management/Financial Responsibility
1. Use resources efficiently
2. Search for less costly ways of doing things

1. Speak up when team members appear to exhibit unsafe behavior or performance
2. Continuously validate and verify information needed for decision making or documentation
3. Stop in the face of uncertainty and takes time to resolve the situation
4. Demonstrate accurate, clear and timely verbal and written communication
5. Actively promote safety for patients, families, visitors and co-workers
6. Attend carefully to important details - practicing Stop, Think, Act and Review in order to self-check behavior and performance

Children's National Health System is an equal opportunity employer that evaluates qualified applicants without regard to race, color, national origin, religion, sex, age, marital status, disability, veteran status, sexual orientation, gender, identity, or other characteristics protected by law.

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