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Senior Licensing Associate (Salk)


Job #: SRLIC01193
Application Instructions: To apply for this position, please use the link below to visit our careers page.
https://recruiting2.ultipro.com/SAL1013SIBS/JobBoard/e9f055e1-a105-4f91-9a67-21aea61655fa/OpportunityDetail?opportunityId=e26a6485-b32b-4cb8-9d41-75240a763791

POSITION SUMMARY
Reporting to Director, Licensing, Office of Technology Development (OTD), oversees intellectual property (IP) licensing of the portfolios within their IP docket at Salk. Directly maintains a docket of Salk investigators and, as needed, assists licensing personnel having primary responsibility for other Salk labs.  Responsible for all intellectual property arising from research performed by Salk investigators in their docket, including patented inventions, tangible research materials and copyright protected materials.  Builds personal relationships with faculty and scientific staff to provide training, encourage invention disclosures, and support participation in the IP protection and licensing processes.  Maintains current knowledge of research programs being performed by investigators in their docket and suggests experiments to demonstrate commercial potential, improve patentability and/or strengthen other legal protection.  In collaboration with OTD’s Senior Director and Director of Innovation Partnerships, identifies potential collaborations with other academic institutions and companies to enhance research programs and provide translational opportunities that may advance commercialization.  Evaluates commercial potential of discoveries and availability of legal protection.  Works with outside counsel and licensees to file, prosecute and maintain patents.  Develops licensing strategies for IP in docket.  Builds a network of contacts in the local and national bio/pharma communities.  Carries out market research to identify potential licensees, contacts companies to solicit licensing interest, and negotiates with interested companies to reach agreement on licensing terms.  Drafts and negotiates licenses, inter-institutional agreements, and other contracts.  Manages post-licensing compliance and issues.  

ESSENTIAL FUNCTIONS
Licensing (25%)
  • Directly maintains a docket of Salk investigators.
  • Evaluates potential licensees for suitability to license and commercialize Salk IP, including their plans for developing the technology commercial products and services.  Contact potential licensees and initiate licensing discussions.
  • In consultation with the Director of Licensing and the OTD Senior Director, drafts term sheets and negotiates licenses and related agreements that meet Salk's policy requirements.  Maximizes licensing opportunities.
  • Keeps Salk inventors apprised of negotiating strategy and progress.
  • Where warranted, re-negotiates the language of existing agreements to address changed conditions while protecting the benefits of Salk's original bargain.
  • In a manner similar to that for licenses, drafts and negotiates other agreements, including without limitation collaboration agreements, inter-institutional agreements related to IP rights, reagent distribution agreements, and various agreements with industry (e.g., relating to use of Salk equipment and facilities).
  • Helps ensure Salk recoups all unreimbursed patent expenses from licensees and structures them to reimburse third-party collaborators as required.  Enters the terms of agreements into department database (Wellspring).   Instruct office staff when to elect title for federally funded inventions.
Legal Protection of Intellectual Property (25%)
  • Evaluates new inventions, materials and software for patentability and other means of legal protection.  Carries out preliminary market analysis and evaluates commercial potential.  Determines whether there is sufficient protection and commercial potential to warrant patenting and/or other protection, marketing and licensing; or if instead, rights should be offered to the inventors or developers. 
  • Develops a legal protection strategy and plans for appropriate discoveries, based on available protection, costs, market interest and market potential.  Ensures invention disclosures include sufficient description.
  • Works with outside counsel in the drafting and filing of provisional patent applications.  Based on results of their efforts to market the invention during the first 10 months of the provisional year and advice of outside counsel, and in consultation with the Senior Director and the other licensing staff, determines whether the provisional should be converted into a U.S. or international (PCT) application.  Ensure government support clauses correctly list federal grants.
  • Oversees and supports the drafting, filing, prosecution and maintenance of patent applications by outside counsel, and helps coordinate participation by the inventors.  Sets budget, approves all legal expenses, and reviews outside counsel bills for compliance.  Creates memos related to IP conversions and abandonment.
  • Registers copyrights on computer software, and arranges for deposit, storage and maintenance of materials.
  • Advises the Director, Licensing and Senior Director, OTD of infringement and other legal issues and participates in efforts to resolve same.
Building and Maintaining Faculty and Staff Relationships and Research Program Knowledge (20%)
  • Establishes and maintains personal relationships with Salk faculty and research staff  keeps up-to-date on their research programs, and provides information, advice and training on a wide range of OTD matters through regular lab meetings and one-on-one discussions.
  • Works with the Director of Licensing and OTD Senior Director to advance OTD goals as they relate to faculty and staff relationships.
  • Works with faculty and staff to identify and encourage disclosure of potential intellectual property, including inventions, tangible research materials, and copyrightable materials.  Advises on experiments that may enhance commercial potential and legal protection.  Identifies and develops potential collaborations for drug screening and other studies that may advance commercial potential.
  • Keeps faculty and staff informed about OTD efforts and progress, providing them with information they need or may request to understand the IP protection and licensing processes regarding their inventions and materials. 
  • Works with other Salk departments as needed to evaluate intellectual property provisions of grants and contracts, purchasing agreements, etc.
License Management (15%)
  • Takes primary responsibility for relationship management of existing license agreements within docket.
  • Works with OTD’s Business Manager to monitor licensee compliance and pursues resolution of any compliance issues that the Business Manager is unable to resolve.  Acts as primary point of contact for licensees regarding collaboration on development of intellectual property right, technology development progress and other alliance management issues. Based on information from and relationship with licensees, provides internal forecasts related to expected payment of licensee fees and progress toward milestones.  In consultation with the Director of Licensing and OTD Senior Director, seeks to define and resolve contract disputes should they arise.
Technology/IP Marketing (15%)
  • Develops a marketing/licensing strategy, including whether to license exclusively or non-exclusively, and determining what fields of use may be concurrently licensed exclusively.  Conducts market research to identify potential licensees for specific inventions and materials and collects information on such companies and their business development professionals.  Promotes the possible commercial potential of inventions and materials. 
  • Develops and maintains a network of contacts in the biotechnology and pharmaceutical industries regionally, nationally, and internationally.
  • Drafts non-confidential summaries of inventions and materials, explaining the benefits and commercial potential of the technology.
  • Contacts potential licensees to solicit licensing interest. 
  • As needed, protects the confidentiality of information provided to companies by drafting and negotiating confidentiality agreements. 
  • Keeps Salk inventors apprised of marketing plans, progress and results, and follows up on any suggestions or industry contacts they may have.
EXPERIENCE
Required:
  • 6+ years of work experience in life science technology licensing, which includes responsibility for patenting, licensing, and evaluation of patentability and markets, working with patent counsel and inventors on patent applications, identifying potential licensees and/or technologies for in-license, making first contact with potential licensees and/or licensors, and negotiating and drafting licenses and other contracts.
  • Applicants must submit a non-confidential deal sheet to demonstrate work experience.
Preferred:
  • 8+ years of work experience in technology licensing
  • Substantial experience drafting and negotiating complex licensing and other technology contracts. Primary responsibility for at least five executed exclusive licenses.
EDUCATION
Required:
  • PhD. in a scientific discipline relevant to Salk research or equivalent years of experience and/or education.
Preferred:
  • Additional degrees or certifications in business, law, or science.
  • Patent Agent registration, and/or CLP or RTTP certification.
SKILLS AND ABILITIES
Required:
  • Knowledgeable about and conversant in high-level cell biology, molecular biology, chemistry, biochemistry and genetics.
  • Ability to develop and maintain cordial personal relationships with faculty and staff; ability to speak to faculty, staff, administration, and company executives about inventions, patent matters, and contract issues in a vernacular that is appropriate for the audience at hand.
  • Demonstrated skill in market research, making market projections and determining the value of technologies. Ability to make a persuasive first contact with potential licensees and company executives. Comfortable using databases and on-line resources to collect and assess markets, market potential and company information.
  • Demonstrated negotiation skills sufficient to obtain license terms and conditions that are beneficial to Salk, while developing functional relationships with licensee companies.
  • Excellent negotiation, problem-solving, organizational, communication, and customer-service skills.
  • Capable of working remotely and independently on multiple complex projects concurrently. Sufficient project management skills to be able to handle a diverse portfolio of faculty, staff, inventions and materials.  
  • Demonstrated ability to work against inflexible deadlines; self-motivation and ability to set personal deadlines and goals when external deadlines are absent.
  • Ability to guide, train and mentor other technology transfer professionals, and to build and maintain an open and collegial office environment.
  • Understanding of the academic research setting, government regulations, and sponsorship requirements and obligations.
  • Ability to maintain the confidentiality of sensitive information and identify potential conflicts of interest.
  • Excellent verbal and written communication skills appropriate for interactions with a broad array of individuals. Interpersonal skills must include tact, good judgment, diplomacy, and flexibility to relate to diverse scientific research staff, faculty, executive management, administrative staff, and external contacts.
  • Proficient with MS Office applications including Word, Excel, Power Point and Outlook
  • Ability to conduct internet research and database searches.
Preferred:
  • Proficient with Wellspring Sophia database system
SPECIAL CONDITIONS OF EMPLOYMENT
  • Must be willing to work in an animal-related research environment.
  • Satisfactory completion of the Institute’s background investigation.
  • Willing to sign a confidentiality agreement.
PHYSICAL REQUIREMENTS
This position requires constant adjusting focus, grasping, hearing, keying, seeing, sitting, talking, analyzing, calculating, communicating, reading, reasoning, writing, and working inside. 

Equal Opportunity Employer/Protected Veterans/Individuals with Disabilities
The contractor will not discharge or in any other manner discriminate against employees or applicants because they have inquired about, discussed, or disclosed their own pay or the pay of another employee or applicant. However, employees who have access to the compensation information of other employees or applicants as a part of their essential job functions cannot disclose the pay of other employees or applicants to individuals who do not otherwise have access to compensation information, unless the disclosure is (a) in response to a formal complaint or charge, (b) in furtherance of an investigation, proceeding, hearing, or action, including an investigation conducted by the employer, or (c) consistent with the contractor’s legal duty to furnish information. 41 CFR 60-1.35(c)