Technology Transfer & Patent Specialist (51998)

GAP SOLUTIONS INC•Bethesda, MD

6d•$180,000 - $187,000•Onsite

About The Position

The candidate will work under the direction of the Acting Director of the NHLBI Office of Technology Transfer and Development (OTTAD). The candidate will provide advice, guidance, and assistance on the development and management of intellectual property, registration and management of patents, terms and negotiation of collaborative agreements, management and administration of licenses and royalties, transfer of research materials, and interpretation of law, policies, rules and regulations, especially those related to the implementation of the Federal Technology Transfer Act of 1986 and other pertinent legislation. The candidate will propose and assist in the development of Institute policy and prepare and disseminate operating procedures and guidelines on matters related to assigned areas of responsibility, and review, analyze, negotiate, and execute planned collaborative agreements [e.g., Cooperative Research and Development Agreements (CRADAs), Clinical Trial Agreements, Research Collaboration Agreements, Material Transfer Agreements, and Confidential Disclosure Agreements, and License Agreements] to ensure that they are in accordance with applicable NIH and HHS policy and procedures and will also review exclusive and nonexclusive license applications; commercial development and access plans, and coordinates or provides status about patent and licensing matters. The candidate will serve as an information resource on licensing policies, regulations and procedures for the ICs it serves and coordinate or manage other activities as required in the management of the technology portfolio of the ICs it serves. In all activities above and assigned, the candidate will exercise discretion and maintain confidentiality while contacting OTTAD stakeholders. The candidate will further ensure that policies and procedures are followed on a day-to-day basis in relation to assigned duties, including client special instructions and in accordance with established firm guidelines.

Requirements

Master’s Degree in related field.
Two (2) years of specialized experience plus a BA/BS degree is equivalent to a Master’s degree.
Thirteen (13) years of experience functioning in a management capacity in a specialized field.

Nice To Haves

Extensive service/marketing experience and a high degree of analytical skills.
Research laboratory experience, USPTO experience and/or a relevant advanced degree in science, business, or law, plus knowledge of automated information systems.
Substantive experience in business development, including strategic planning related activities.
Substantive knowledge of the laws, rules, and regulations applicable to patents, royalties, and licensing.
Business management experience and/or policy development experience in biotechnology/medical/general science-based industries or government offices.
Capable of working independently as well as coordinating with others involved in technology transfer at OTTAD, the ICs and other business and nonprofit institutions.
Thorough knowledge of the Steven-Wydler and Federal Technology Transfer Acts and the Cooperative Research and Development Agreements.
Knowledge of conflict-of-interest regulations, Freedom of Information Act, and Privacy Act provisions as well as negotiating techniques and procedures.

Responsibilities

Serve as an experienced Technical Licensing Specialist responsible for handling a complex caseload, of technology transfer transactions of public health significance, including licenses resulting from the determination of CRADA Subject Inventions, licenses resulting from intramural inventions, review and evaluation of extramural agreements, and transfers and licensing of biological materials.
Prepare analytical, evaluative the commercial potential and patentability of inventions through a thorough review of highly specialized information from patent applications, inventors, companies, artificial intelligence inquiries, and publicly available materials.
Engage in the marketing and licensing of the above referenced subject matter inventions and consistent with regulations covering government licensing activities. Licensing plan may involve exclusive or nonexclusive contracts with companies, various types of royalty arrangements, grouping with other related technologies, etc.
Participate in review and oversight of domestic and foreign patent prosecution, including analyses of issues of potential patent infringement and interference, and the payment of annuity and maintenance fees.
Provide experienced information on availability of technology for licenses, as well as nature of proprietary protection.
Handle inquiries from companies seeking to license technologies that fit their business and access plans, reviews license applications from companies including, but not limited to, compliance with applicable Federal and NIH policy, regulatory authorities, and guidelines, analyze product development proposals, and works with potential licensee to establish performance benchmarks for development of products under license.
Develop royalty proposals based on analyses of the stage of development of technology, size of market, and availability of competing technologies.
Formulate, develop, and negotiate license agreements, both royalty terms and legal terms of licensing agreements, consistent with federal law, government regulations, and NIH policy.
Monitor performance compliance of licenses within guidelines established by enabling statutes and/or executive policies.
Provide independent analyses, interpretation and evaluation of highly complex, controversial, or abstract information on licensing agreements involving competing interests among various research institutes, inventors, legal, technical and business concerns.
Engage in meetings and communications with NIH officials, intramural/extramural scientists, corporate legal counsel, business executives, and university technology transfer officers, for the purpose of facilitating OTTAD's technology transfer programs with PHS components, industry and academia.