Vanderbilt University Licensing Analyst in Nashville, Tennessee

Licensing Analyst (Job Number: 1801740)

Description

Position Summary :

The Licensing Analyst is part of the Center for Technology Transfer and Commercialization at Vanderbilt University and is a key individual contributor responsible for working closely with and in support of Licensing Officers in their efforts to work with Vanderbilt inventors to develop and implement commercialization strategies for promising technologies, particularly in the identification, protection, marketing, licensing, and management of those technologies. Such efforts may include developing commercial relationships with existing companies as well as with start-up firms.

About the WorkUnit :

Vanderbilt Center for Technology Transfer and Commercialization's mission is to provide professional commercialization services to the Vanderbilt community, thus optimizing the flow of innovation to the marketplace and generating revenue that supports future research activities, while having a positive impact on society.

We accomplish this by serving as an efficient and effective conduit for the transfer of promising intellectual property to industry; contributing to regional economic development by licensing locally and supporting new venture creation; and encouraging greater translational research collaborations between academia and industry.

Key Functions andExpected Performance:

Education and Outreach

§ Inreach – to Vanderbilt faculty, staff and students to raise awareness of CTTC’s functions and services, and to promote collaboration with CTTC and the submission of invention disclosures.

§ Outreach – to industry, TTO colleagues and the general public to raise awareness of CTTC’s accomplishments, practices, and technologies available for licensing.

§ Education and guidance – including departmental talks, guidance and education to inventors, sponsored research administration, upper administration, hosting of talks by external subject matter experts, sharing of information and/or resources with Vanderbilt community – for the purpose of educating Vanderbilt constituents on issues related to IP and licensing.

Evaluation of Invention Disclosures

§ Protectability – support Licensing Officer efforts to assess the nature of new disclosures to determine whether they are best protected by patent, copyright or some other form of intellectual property; assess whether or not sufficient rights may exist based on existence of prior art, public disclosure or other potential bars to patentability; also determine ownership of such rights and determine if rights are subject to any federal or third party rights.

§ Marketability – perform market assessments of new technologies to determine potential size of commercial impact, types and names of potential licensees, and contacts within such potential licensees in preparation for active marketing of the technology.

§ Policy – assist Licensing Officers to determine, as needed, whether or not inventions are truly subject to Vanderbilt Technology Policy; waive rights to non-Vanderbilt IP; return rights to requesting inventors of Vanderbilt IP when CTTC has determine not to pursue commercialization.

Marketing

§ Preparation of marketing materials – prepare non-confidential summaries and other marketing materials for each new technology, as appropriate; post marketing materials to CTTC website; update and maintain such marketing materials

§ Active marketing – actively reach out to potential licensees to establish contacts and initiate discussions regarding Vanderbilt IP; solicit feedback on Vanderbilt technologies available for licensing and share such feedback with inventors; record interactions with industry within the Inteum database; continue to update list of potential licensees and licensing contacts based on market feedback.

§ CDAs – train with Licensing Officers to learn to draft, negotiate and execute confidentiality agreements for the purpose of sharing detailed confidential information with potential licensees, as necessary; ensure that confidentiality agreements are consistent with OGC-approved template and communicate to management any pertinent details or departures from template.

IP Protection and Management

§ Familiarity with appropriate IP laws and practices – gain familiarity of intellectual property law basics and current knowledge of emerging intellectual property law and practice.

§ Docket management – provide support to Licensing Officers for all intellectual property protection actions

Project Management

§ Specific Examples:

§ Drive process improvement related to core licensing function - take an active role in process improvement efforts within CTTC; suggest new workflows or processes that need improvement; investigate solutions and share results with others at CTTC.

§ Plan and initiate industry engagement activities in support of our overall mission to promote more industry interaction and funding of Vanderbilt research programs. Serve in an alliance manager role, if necessary, for complex research relationships.

§ Manage other projects in support of the Director and in furtherance of CTTC’s larger goals, as necessary.

Licensing and Compliance

§ Negotiate license and option terms – assist Licensing Officers as they engage prospective licensees in discussion on relevant terms and conditions, including financial terms, commercialization plans, sources of funding for development work, diligence, sublicensing, etc. Notify management of all negotiations and obtain approvals on all key terms.

§ Draft and negotiate agreement language – gain familiarity with contract drafting by using CTTC template agreements to incorporate all terms from term sheet; discuss with management at appropriate steps to get review of all agreement language; conduct negotiations in a timely, efficient and professional manner.

§ Compliance with approval and routing process – support CTTC routing procedures by assisting Licensing Officers in the preparation and approval of necessary agreement documentation

§ Monitoring of executed licenses and compliance enforcement – maintain communication with licensees post-transaction; monitor licensee’s compliance with all terms and conditions and execution of the commercialization plan; assist Licensing Officers and License Compliance team to work to resolve any disputes in a timely fashion; prepare and obtain approval for all official notices and letters of termination.

§ Transactional efficiency – support Licensing Officers efforts to complete all negotiations in a timely fashion; provide reasonable turnaround time on draft agreements while maintaining high quality of work product; maintain communication to encourage timely responses from prospective licensees; clearly organize multiple ongoing negotiations and document efforts for each to avoid confusion.

Support of Other Transactions

§ MTAs – gain familiarity with MTA documents and procedures, review and negotiate, Material Transfer Agreements under supervision for researchers, as appropriate.

§ SRA/CTAs – gain familiarity with research contracting documents and procedures; support Licensing Officer efforts to review intellectual property and other terms as requested by OCM, OCRA and others and provide timely responses.

SupervisoryRelationships :

This position does not have supervisory responsibility; the position reports administratively and functionally to the Director of Licensing.

Education and Certifications:

§ A Master’s degree in science or engineering from an accredited institution of higher education is necessary.

§ A Ph.D. in science or engineering from an accredited institution of higher education is preferred.

§ CLP, RTTP, or Registered Patent Agent is preferred.

Experience and Skills :

§ At least one year of combined experience in technology licensing in an academic setting, national lab, or industry, whether through internship, training program, or otherwise is preferred.

§ Excellent writing and verbal communication, project management, conceptual, and analytical skills are necessary.

§ An ability to work effectively and productively as a member of a team and with senior management is preferred.

§ Ability to promote a positive culture of support and compliance with internal and external regulatory requirements is preferred.

§ Ability to prioritize and multi-task in a collaborative, fast-paced environment is preferred.

§ Experience with campus academic & administrative platforms or other industry related software is preferred.

§ Knowledge and experience with regulatory compliance guidelines in the postsecondary education industry or a related sector is preferred.

§ Significant experience working with for-profit postsecondary institutions is preferred.

KeyCharacteristics of a Successful Team Member in this Work Unit:

§ Analytical& Detail-Oriented – Accurately assesses information and applies applicable law, policy and procedure. Considers the long term implications of actions today and advises employees appropriately. Even small mistakes can create big issues; attention to detail work indicates care about the outcomes.

§ HelpfulNature – Offers to help lighten the load for others in times of need. Volunteers rather than waiting to be asked. Understands that almost no one works in a silo and needs the help of others to do their job well; recognizes that by helping others first, others will likely reciprocate.

§ Honestand Transparent – Doesn’t have hidden agendas. Doesn’t play people against each other. Is authentic and forthright.

§ Integrity – Holds oneself accountable; takes responsibility for failures as well as successes, recognizes that trust is required to hold a team together.

Vanderbilt University is an equal opportunity, affirmative action employer. Women, minorities, people with disabilities and protected veterans are encouraged to apply.

Primary Location: United States-Tennessee-Nashville

Organization: 27300 - Technology Transfer

Job: Research, Extension, and Other Education Professionals

Vanderbilt University is committed to principles of equal opportunity and affirmative action