Director of Technology Licensing

UCSF•San Francisco, CA

10d

About The Position

The Director of Technology Licensing role involves advising on intellectual property (IP) rights protection, business startup, and other technology transfer related issues. This position evaluates the commercial potential of research results, obtains and manages appropriate IP rights protection, markets inventions and software, and/or biological/tangible materials. The role also includes drafting and negotiating, and managing IP licenses and Material Transfer Agreements (MTAs), Non-Disclosure Agreements (NDAs), and advising on IP terms in research and collaboration agreements. The Director supports companies wishing to sponsor research and/or license technologies and facilitates the administration of federal and state laws regarding research, conflict of interest, IP, contracts, and employment. This role works with outside patent attorneys to file patent applications. The Director operates under the supervision of the Assistant Vice Chancellor of Business Development, Innovation and Partnerships, utilizing advanced intellectual property/technology licensing/transfer concepts and organizational objectives to resolve highly complex issues. The Director is responsible for a functional unit of IP Officer professionals involved in licensing intellectual property rights and other technology transfer-related issues. The unit evaluates opportunities for commercial potential, develops commercialization plans, and makes connections with potential commercial partners. This involves defining the market of potential patients and medical prescribers, valuing the market opportunity, creating a business strategy (including IP strategy), developing new startups as appropriate, and resolving other technology development gaps relevant to the commercialization of UCSF technologies. The team evaluates the commercial potential of research results, explores IP rights protection through outside counsel (e.g., patents, software, trademarks, and other IP assets); engages with outside investors/companies to secure a commercialization partner, develops and negotiates financial term sheets related to licensing transactions including equity terms. The Director facilitates the administration of federal and state laws regarding research, conflict of interest, IP, contracts, and employment. The Director works with external patent attorneys on intellectual property and contract attorneys to negotiate and finalize license agreements. The Director uses skills as a seasoned, experienced business development and licensing professional with a full understanding of industry practices and organization policies and procedures to resolve a wide range of issues.

Requirements

Advanced intellectual property / technology licensing / transfer concepts
Full understanding of industry practices and organization policies and procedures
Scientific and technology expertise
Extensive knowledge of the life sciences industry
Ability to work without direct supervision
Capacity to delegate work
Ability to work in teams

Nice To Haves

Experience in business development and licensing
Experience in managing a functional unit of IP Officer professionals

Responsibilities

Oversee process improvement change efforts and communicate with campus leadership.
Define the direction of commercialization and appropriate licensing strategies for commercializing research discoveries.
Lead goal setting for the function and implement measurable key performance indicators for year-to-year comparators.
Lead and oversee agreement template development, such as startup-related agreements, with external counsel and law firms (exclusive and non-exclusive agreements) and including those required for UCSF to receive equity.
Leverage scientific and technology expertise to determine important features of a technology, a path to generate products/services from the technology, and cultivate a commercialization opportunity with potential partners.
Drive Business Development and Licensing workflow, ensuring externally facing aspects are of high quality, such as building pitch decks and presenting technology opportunities to companies/investors.
Engage with executives, business development professionals, and venture capitalists to secure commercial development partners to translate UCSF technologies into products or services.
Use extensive knowledge of the life sciences industry to develop appropriate licensing strategies and deal valuations (including equity terms) to support the negotiation of financial term sheets for patent, copyright, trademark, technology rights, and/or know-how licenses (IP licenses).
Nurture relationships with both faculty innovators and the external investor community to drive product commercialization with appropriate partners to maximize opportunities for success.
Create and implement value-added projects that contribute to the overall development of the team(s).
Work without direct supervision and deal with a variety of different technologies and market variations/uncertainty.
Delegate work and work in teams to achieve the most efficient use of time, resource, and knowledge.
Administer and manage all of UCSF’s intellectual property.
Transfer and commercialize campus technologies for public use and benefit.
Generate technology license income for research and education.
Implement the University of California Patent and Copyright Policies.
Educate the campus community about intellectual property and tangible research property management.
Evaluate campus inventions for commercial promise.
Transfer proprietary research materials from the campus to end-users in the public and private sectors.
Secure appropriate intellectual property protection for university technologies.
Market campus intellectual property to industry and investors.
Establish the value of campus technologies.
Negotiate and draft appropriate license agreements to transfer these technologies to commercial developers.
Facilitate the formation of new companies based on UCSF technologies.
Monitor existing licensees for compliance.
Distribute resulting license income to joint owners, inventors, and the campus.
Structure and negotiate strategic research partnerships, including structuring, drafting, and negotiating research collaboration and digital health product co-development agreements.
Negotiate and approve intellectual property and licensing terms incorporated within all categories of both non-profit and industry sponsored research agreements.
Provide intellectual property advice as needed to other Innovation Ventures staff, the Office of the Campus Counsel, the Office of Sponsored Research, Supply Chain Management, and any other UCSF administrative unit in need of its intellectual property and business expertise.
Work in concert with the University of California Office of the President (UCOP) and other UC campus technology transfer offices to further the system-wide goals of the University of California’s technology transfer program.