Technology Licensing Officer
About The Position
The Technology Licensing Officer will report to the Director of the Technology Ventures Office (TVO). The Technology Licensing Officer will evaluate inventions made by researchers, assessing their commercial potential, identifying potential licensees and drafting and negotiating exclusive and non-exclusive license agreements. The Technology Licensing Officer is responsible for directing outside patent counsel on the drafting and prosecution of patents. The Technology Licensing Officer will collaborate with TVO’s administrative staff to maintain IP files and process financial transactions. This position is responsible for drafting and negotiating industrially sponsored research agreements as well as material transfer, data transfer, software, collaboration, inter-institutional, and non-disclosure agreements. The Technology Licensing Officer will have interactions with BILH research investigators at Beth Israel Deaconess Medical Center, Joslin Diabetes Center and Lahey Hospital and Medical Center, pharmaceutical and biotechnology company representatives, venture capitalists and external Technology Transfer Offices.
Requirements
- Master’s degree in Biological Science required; Doctoral degree in Biological Science or JD preferred.
- 5 - 8 years technology licensing experience in academic, medical center, and/or industrial environments required.
- Related experience in biological laboratory research preferred.
- Knowledge of patent terminology and filing procedures including both U.S. and foreign matters.
- Must be highly accurate, strong attention to detail and the ability to maintain confidentiality of IP affairs.
- Strong writing and verbal skills and experience with Word, Excel, Outlook as well as solid internet research capabilities (i.e., USPTO, EPO, WIPO, Google Patents).
- Willingness to work as a team player; able to thrive in a fast-paced, demanding environment.
Nice To Haves
- Doctoral degree in Biological Science or JD preferred.
- Related experience in biological laboratory research preferred.
Responsibilities
- Negotiates drafts and maintains intellectual property agreements including but not limited to licensing agreements, industrially sponsored research agreements, material and data transfer agreements, and patent management agreements.
- Must have the ability to edit language unique to each intellectual property agreement type (i.e., SRA, ELA, NELA, MTA, DTA, RCA, IIA, CDA, …) while remaining consistent with hospital mission and policies (essential)
- Evaluates new invention disclosures, develops a strategy to protect these inventions and directs outside patent counsel in the drafting and prosecution of patents. (essential)
- Develops commercialization strategies for inventions, including identifying biotech, pharmaceutical and medical device companies capable of licensing and commercializing these technologies. (essential)
- Educates and informs researchers on the preparation of invention disclosures and on matters related to the protection and licensing of intellectual property, consistent with BIDMC internal policies on research and technology transfer. (essential)
- Timely enters agreements into the existing TVO IP database and assist with the intake process of new agreement requests from the centralized web-based grant portal (essential)
- Assists the TVO Finance Analyst with the reconciliation of outside patent counsel invoices ensuring all charges are accurately allocated to their unique TVO IP docket number. (essential)
- Evaluates invention disclosures involving AI, machine learning, software, algorithms, digital health tools and data-driven technologies, considering patent and non-patent strategies.
- Develops intellectual property and commercialization strategies tailored to AI- and software-enabled innovations, including appropriate licensing models.
- Drafts and negotiates software, data use, cloud services, and AI-related agreements.
- Advises researchers on disclosure, data usage, model training and commercialization considerations for digital technologies.
- Identifies industry partners, startups and investors in digital health, data analytics and life sciences technology sectors.
- Collaborates with outside counsel on patent, freedom-to-operate and regulatory considerations for digital technologies.
- Monitors emerging best practices in AI and digital technology transfer.
Benefits
- comprehensive compensation and benefits
- healthy and balanced life
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What This Job Offers
Job Type
Full-time
Career Level
Manager
