Licensing Officer or Senior Licensing Officer

Location
Flagstaff, Arizona
Salary
Commensurate with experience
Posted
Jun 14, 2018
Ref
603605
Institution Type
Four-Year Institution

Special Information   

***This position is being re-opened.  If you have already applied, you do not need to reapply.***

To be considered, complete the online NAU application, and provide a cover letter and resume with 3 to 5 professional references.

The Licensing Officer will be responsible for Intellectual Property (IP) case management including identifying, evaluating, marketing and licensing commercially viable inventions made by NAU inventors (approx. 50 disclosures received annually).  Incumbent must be able to establish and maintain active, productive working relationships with NAU faculty and researchers at all levels to build awareness of the commercial potential of their research and of technology transfer as a mechanism for dissemination of research outcomes.  Reports to the Assistant Vice President for Research and Innovation.

Job Description   

Licensing Officer/Senior Licensing Officer

  • Keep informed about and understand research activities and capacity across the full range of academic disciplines at NAU; utilize that knowledge to identify research that has the potential to generate commercially viable intellectual property. Meet regularly with faculty and other researchers to understand, identify and assess research that has or could have commercial potential.
  • Familiarize NAU researchers with technology transfer in terms of purpose, process, and value of commercialization to the inventors, university and State.
  • Solicit invention disclosures, advise researchers on the preparation of invention disclosures, and provide guidance on intellectual property issues.
  • Review disclosures and perform technical and marketing analyses to facilitate decision-making.  These analyses include but are not limited to the following elements: novelty, utility, technology maturity level, advantages over existing commercial products, market barriers and opportunities, etc.)
  • Facilitate the preparation of patent applications to assure that the patent strategy is followed, expenses are controlled, and patent, copyright, trademark, and other intellectual property rights are properly protected. 
  • Conduct market research and analysis to determine fair market value and to establish commercially reasonable business terms for a broad range of intellectual property types.
  • Work with inventors to establish technology milestones, timelines for moving technology into a commercial product, and appropriate IP strategies; work with Director to assess and prioritize university inventions for Proof of Concept and other IP development funding.
  • Identify, cultivate, and evaluate potential licensees.  Develop and maintain relationships with collaborators, licensees, and sponsors to further develop and commercialize NAU intellectual property.
  • Structure, draft, and negotiate term sheets, options, licenses, inter-institutional agreements, and other assigned commercialization agreements that facilitate and effect commercialization of NAU technologies.
  • Draft, review, and negotiate Material Transfer Agreements (MTAs) and Non-Disclosure Agreements (NDAs) in support of technology transfer activities. 
  • Other related duties as assigned.

Senior Licensing Officer

  • Work directly with outside patent counsel to prepare patent applications and to manage patent prosecution (for assigned cases) to assure that the patent strategy is followed, expenses are controlled, and patent, copyright, trademark and other intellectual property rights are properly protected. 
  • Manage the interaction between the patent attorneys and inventors to ensure that high quality patents are obtained.
  • Exercise signature authority to execute Material Transfer Agreements, Non-Disclosure Agreements, Publishing Licenses, and other support agreements.

Minimum Qualifications   

Licensing Officer

  • Bachelor of Science degree in Physical Sciences, Engineering, or Life Sciences, and
  • 3 years’ professional experience in a university technology transfer office, including a minimum of 1 year as a Licensing Associate/Officer; or,
  • A combination of 5 years’ experience in university technology transfer, including a minimum of 2 years as a licensing professional combined with other professional experience in technology transfer (e.g., technology marketing manager, industry contract officer)

Senior Licensing Officer

  • Bachelor of Science degree in Physical Sciences, Engineering, or Life Sciences, and
  • 5 years’ professional experience in a university technology transfer office, including a minimum of 2 years as a Licensing Associate/Officer; or,
  • A combination of 7 years’ experience in university technology transfer, including a minimum of 3 years as a licensing professional combined with other professional experience in technology transfer (e.g., technology marketing manager, industry contract officer)

Preferred Qualifications   

  • Bachelor of Science, Master of Science, or PhD in Computer Science is highly desirable
  • MS or PhD in any Engineering field or in Physical Sciences
  • MS or PhD in Life Sciences
  • Current CLP or RTTP certification
  • Professional research experience in Physical Sciences, Engineering, or Life Sciences

Knowledge Skills and Abilities   

  • Strong working knowledge of technology development, evaluation, marketing, and commercialization practices in the U.S.
  • Strong knowledge of intellectual property law.
  • Strong understanding of and commitment to upholding university technology transfer policy
  • Ability to draft and negotiate agreements, including options, evaluation and commercial licenses, and inter-institutional agreements that integrate the understanding of the technology, the goals of university technology transfer, and good business practice.
  • Skill in reviewing legal documents and negotiating terms of agreements.
  • Ability to read legal documents and identify deal consistent and inconsistent points and ability to succinctly and accurately summarize negotiated deal points in a term sheet.
  • Proficiency in conducting financial, market, and industry analysis in order to value technologies.
  • Knowledge of copyright and patent law and ability to understand the legal and technical issues affecting protection, use and exploitation of such intellectual property.
  • Ability to translate complex scientific concepts into lay terms.
  • Ability to work collaboratively with faculty researchers.
  • Excellent negotiating skills with the ability to express complex ideas clearly and succinctly.
  • Ability to think and act strategically and creatively
  • Detail-oriented with well-developed information gathering and investigative skills
  • Ability to work collaboratively and effectively with business and industry representatives
  • Strong interpersonal and communication skills (verbal, written and listening) to obtain relevant information transmit relevant information at the appropriate level of detail and frequency, to know when to question for additional detail and sufficient diplomacy and tact to deliver difficult messages.
  • Ability to work with individuals from diverse cultural backgrounds.

Background Information   

Northern Arizona University requires satisfactory results for the following:  a criminal background investigation, an employment history verification and a degree verification (in some cases) prior to employment.  You may also be required to complete a fingerprint background check.

Additionally, as an employer in the state of Arizona, NAU is required to participate in the federal E-Verify program that assists employers with verifying new employees' right to work in the United States.

Finally, each year the Northern Arizona University Police Department releases an annual security report.  The report is a result of the federal law known as the Clery Act and contains policy statements that address the school’s policies, procedures and programs concerning safety and security including policies for responding to emergency situations and sexual offenses.  The report contains three years of data for Clery reportable crime statistics for the campus along with the most current year’s Fire Safety Report, which includes policy statements and fire statistics for Flagstaff on-campus student housing. 

The report may be viewed at nau.edu/clery or by visiting the NAUPD website at: http://www.nau.edu/police.  A printed copy of the report is available upon request by contacting the NAU Police Department, Records Department at (928)523-8884 or by visiting the department at Building 98A on the NAU Mountain Campus.

Salary   

Commensurate with experience.

**The starting salary will be determined by the qualifications of the selected applicant balanced with departmental budget availability, internal salary equity considerations, and available market information.

FLSA Status

This position is exempt from the overtime provisions of the Fair Labor Standards Act (FLSA) and therefore will not earn overtime or compensatory time for additional time worked.

Benefits   

This is a Service Professional (SPF) position.  NAU offers an excellent benefit package including generous health, dental and vision insurance; participation in the Arizona State Retirement System or the Optional Retirement Program; 22 days of vacation and 10 holidays per year; and tuition reduction for employees and qualified dependents.  More information on benefits at NAU is available at https://nau.edu/Human-Resources/Benefits/Eligibility-Enrollment/

NAU is a tobacco and smoke-free campus.

Service Professionals are hired on a contract basis, renewable each 6 months according to terms of the Conditions of Professional Service, which may be found at: http://hr.nau.edu/sites/default/files/files/Conditions%20of%20Service%20Professional%20Dec%202012%20Rev.pdf/.

Employees offered a position will be eligible for state health plans (including NAU's BCBS Plan).  New employees are eligible for benefits on the first day of the pay period following their enrollment, after their employment date.  Employees will have 31 days from their start date to enroll in benefits. If a new employee chooses the ASRS retirement option, participation in the Arizona State Retirement System, and the long-term disability coverage that accompanies it, will begin on the first of the pay period following 6 months after the new employee's start date. New employees who choose to participate in the Optional Retirement Plan (ORP), which is an alternative to the ASRS plan for faculty and other appointed staff, will begin to participate on the first day of employment.  Additionally, the long-term disability plan that accompanies the ORP will begin on the first day of employment.  More information is available at: https://nau.edu/Human-Resources/Benefits/Eligibility-Enrollment/

Learning and Development

 Your career at Northern Arizona University includes the opportunity for professional development.  New employee on-boarding training includes courses to be completed within the first 30 days (http://nau.edu/Human-Resources/Employee-Resources/Training/Required/). If your position includes the supervision of a benefit-eligible employee, we offer the NAU Supervisors Academy for you to complete within your first 2 years.  In addition to the development classes offered in-person, every NAU employee receives a free subscription to Lynda.com. From this site you can access more than 1,400 training videos on a broad range of subjects, including business skills, photography, music and video, home computing, and web design and development.  

Application Deadline

July 16, 2018 at 11:59 p.m.

How to Apply   

To apply for this position, please click on the "Apply" button on this page.  You must submit your application by clicking on the "Submit" button by midnight of the application deadline.  If you need assistance completing your application there are instructions available on line at http://nau.edu/human-resources/ or in person in the Human Resources Department located in Building 91 on the NAU Campus - on the corner of Beaver and DuPont Streets. 

If you are an individual with a disability and need reasonable accommodation to participate in the hiring process please contact the Office of Equity and Access at: 928-523-3312/TDD - 928-523-1006 or PO Box 4083, Flagstaff AZ  86011.

Equal Employment Opportunity

Northern Arizona University is a committed Equal Opportunity/Affirmative Action Institution.  Women, minorities, veterans and individuals with disabilities are encouraged to apply.  NAU is responsive to the needs of dual career couples.

EEO is the Law Poster and Supplements

NAU is an Employer of National Service.  AmeriCorps, Peace Corps, and other National Service alumni are encouraged to apply.