The Senior Licensing Officer is part of the Center for Technology Transfer and Commercialization at Vanderbilt University and is a key individual contributor responsible for working closely with Vanderbilt inventors to develop and implement commercialization strategies for promising, high profile technologies in areas of historical commercial strengths - particularly in the identification, protection, marketing, licensing, and management of those technologies. Such efforts may include developing commercial relationships with existing companies as well as with start-ups.
The Center for Technology Transfer and Commercialization’s mission is to provide professional commercialization services to the Vanderbilt community, thus optimizing the flow of innovation to the marketplace and generating revenue that supports future research activities, while having a positive impact on society.
We accomplish this by serving as an efficient and effective conduit for the transfer of promising intellectual property to industry; contributing to regional economic development by licensing locally and supporting new venture creation; and encouraging greater translational research collaborations between academia and industry.

QUALIFICATIONS

• A Bachelor’s degree in computer science, computer engineering, or electrical engineering is necessary
• A Master’s degree in physical sciences/information sciences/engineering from an accredited institution of higher education is necessary.
• A Ph.D. in physical sciences/information sciences/engineering from an accredited institution of higher education is preferred.
• CLP, RTTP, or Registered Patent Agent is preferred.
• At least five years of combined experience in technology licensing in an academic setting, national lab, or industry is necessary. Eight years of experience is preferred.
• Experience in end-user licensing is strongly preferred.
• Excellent writing and verbal communication, project management, conceptual, and analytical skills are necessary.
• An ability to work effectively and productively as a member of a team and with senior management is preferred.
• Ability to promote a positive culture of support and compliance with internal and external regulatory requirements is preferred.
• Ability to prioritize and multi-task in a collaborative, fast-paced environment is preferred.
• Experience with campus academic & administrative platforms or other industry related software is preferred.
• Knowledge and experience with regulatory compliance guidelines in the postsecondary education industry or a related sector is preferred.
• Significant experience working with postsecondary institutions is preferred.

Education and Outreach

• Inreach – to Vanderbilt faculty, staff and students to raise awareness of CTTC’s functions and services, and to promote collaboration with CTTC and the submission of invention disclosures.
• Outreach – to industry, TTO colleagues and the general public to raise awareness of CTTC’saccomplishments, practices, and technologies available for licensing.
• Education and guidance – including departmental talks, guidance and education to inventors, sponsored research administration, upper administration, hosting of talks by external subject matter experts, sharing of information and/or resources with Vanderbilt community – for the purpose of educating Vanderbilt constituents on issues related to IP and licensing

Education and Outreach

• Inreach – to Vanderbilt faculty, staff and students to raise awareness of CTTC’s functions and services, and to promote collaboration with CTTC and the submission of invention disclosures.
• Outreach – to industry, TTO colleagues and the general public to raise awareness of CTTC’saccomplishments, practices, and technologies available for licensing.
• Education and guidance – including departmental talks, guidance and education to inventors, sponsored research administration, upper administration, hosting of talks by external subject matter experts, sharing of information and/or resources with Vanderbilt community – for the purpose of educating Vanderbilt constituents on issues related to IP and licensing.

Evaluation of Invention Disclosures

• Protectability – assess the nature of new disclosures to determine whether they are best protected by patent, copyright or some other form of intellectual property; assess whether or not sufficient rights may exist based on existence of prior art, public disclosure or other potential bars to patentability; also determine ownership of such rights and determine if rights are subject to any federal or third-party rights.
• Marketability – perform market assessments of new technologies to determine potential size of commercial impact, types and names of potential licensees, and contacts within such potential licensees in preparation for active marketing of the technology.
• Policy – determine, as needed, whether or not inventions are truly subject to Vanderbilt Technology Policy; waive rights to non-Vanderbilt IP; return rights to requesting inventors of Vanderbilt IP when CTTC has determined not to pursue commercialization.

Marketing

• Preparation of marketing materials – prepare non-confidential summaries and other marketing materials for each new technology, as appropriate; post marketing materials to CTTC website; update and maintain such marketing materials
• Active marketing – actively reach out to potential licensees to establish contacts and initiate discussions regarding Vanderbilt IP; solicit feedback on Vanderbilt technologies available for licensing and share such feedback with inventors; record interactions with industry within the Inteum database; continue to update list of potential licensees and licensing contacts based on market feedback.
• CDAs – draft, negotiate and execute confidentiality agreements for the purpose of sharing detailed confidential information with potential licensees, as necessary; ensure that confidentiality agreements are consistent with OGC-approved template and communicate to management any pertinent details or departures from template.

IP Protection and Management

• Familiarity with appropriate IP laws and practices – maintain familiarity of intellectual property law basics and current knowledge of emerging intellectual property law and practice.
• Management of outside counsel (timing and relationship) – select and supervise appropriate outside legal counsel; direct external legal counsel in the preparation, prosecution and maintenance of patent rights, registration of copyrights, and registration and maintenance of technology-relevant trademarks.
• Management of IP protection costs (fiscal responsibility) – manage internal budgeting, expense tracking and licensee reimbursement for assigned technologies; follow departmental guidelines and philosophies on expenses for intellectual property protection.
• Docket management – regularly review all intellectual property protection actions for assigned technologies and respond to relevant office actions and requests for information from outside counsel in a timely fashion and within pertinent timelines; prepare and submit all necessary documentation for expense approval.

Project Management

• In support of office goals, oversee execution of core licensing function– intake of new disclosures, review of IP terms for other Vanderbilt contracting offices, execution of new options and licenses – to meet team/office goals, and use measured performance to guide future activities.
• Drive process improvement related to core licensing function - take an active role in process improvement efforts within CTTC; suggest new workflows or processes that need improvement; investigate solutions and share results with others at CTTC.
• Plan and initiate industry engagement activities in support of our overall mission to promote more industry interaction and funding of Vanderbilt research programs.
• Manage other projects in support of the Director and in furtherance of CTTC’s larger goals, as necessary.

Licensing and Compliance

• Negotiate license and option terms – engage prospective licensees in discussion on relevant terms and conditions, including financial terms, commercialization plans, sources of funding for development work, diligence, sublicensing, etc. Notify management of all negotiations and obtain approvals on all key terms.
• Draft and negotiate agreement language – use CTTC template agreements where possible and incorporate all terms from term sheet; discuss with management at appropriate steps to get review of all agreement language; conduct negotiations in a timely, efficient and professional manner.
• Compliance with approval and routing process – use CTTC routing and agreement documentation forms and procedures; seek CFO approvals and final agreement reviews when appropriate.
• Monitoring of executed licenses and compliance enforcement – maintain communication with licensees post-transaction; monitor licensee’s compliance with all terms and conditions and execution of the commercialization plan; work to resolve any disputes in a timely fashion; prepare and obtain approval for all official notices and letters of termination. Additionally, serve in a management role with regards to the oversight of compliance activities for the entire office.
• Transactional efficiency – work to complete all negotiations in a timely fashion; provide reasonable turnaround time on draft agreements while maintaining high quality of work product; maintain communication to encourage timely responses from prospective licensees; clearly organize multiple ongoing negotiations and document efforts for each to avoid confusion.

Support of Other Transactions

• MTAs – support, review, negotiate, draft and execute Material Transfer Agreements for researchers under management, as appropriate.
• SRA/CTAs – review intellectual property and other terms as requested by OCM, OCRA and others and provide timely responses; ensure that all requests are through proper channels and are documented appropriately.
• EULAs – help manage CTTC’s online marketplace, VU e-Innovations, for the licensing and distribution of software and creative works directly to end-users; assist with customer service activities; report on sales volumes and other transaction-related metrics.