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Job Details

Junior Technology Assessment And Licensing Associate

Company name
University of Idaho.

Location
Moscow, ID, United States

Employment Type
Full-Time

Industry
Legal

Posted on
Jun 29, 2019

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Profile

Junior Technology Assessment and Licensing Associate

The candidate reporting to the Director of the Office of Technology Transfer, responsible for the management and administration of a portfolio of intellectual property (IP). Will be responsible for meeting with faculty to educate them about the technology commercialization process and to encourage new invention disclosures. Develop marketing and commercialization strategies, assist with patent portfolio management, and assess and negotiate contracts with industrial partners. These contracts include license agreements, non-disclosure agreements, and material transfer agreements in support of technology transfer and sponsored projects. Upload agreements and associated data into a database management system and prepare reports as requested and required. They are responsible for using superior judgment to ensure all transactions comply with pertinent policies, regulations and laws associated with the management of intellectual property in close coordination with the Director of the Office of Technology Transfer and the other TALAs employed by the university. Collecting and assessing information relevant to patent and market feasibility. Overseeing government reporting obligations and ensuring compliance. Discussing the invention with inventor(s) to understand the technology and its potential uses. Analyzing commercial value of research/invention and its patentability. Determining whether outside review is appropriate and communicating with the external reviewer. Reporting the results of the assessments with the inventor(s) and college. Developing strategies and/or plans for commercialization. Acting as liaison between researcher, university, outside council, and governmental agencies. Communicating strategies with inventor(s) and their college(s). Identifying prospective licensees and initiating contact. Preparing marketing materials. Preparing and presenting solicitation materials. Drafting and negotiating license agreements. Coordinate and facilitate various activities undertaken to protect the University IP by: Identifying appropriate patent counsel. Facilitating discussions between counsel and UI inventor(s). Reviewing communications from counsel. Collaborating with counsel to ensure contracts align with university strategic plans, policies, and procedures. Evaluating patent office actions and providing input to the prosecution in situations of patent infringement. Manage portfolio of existing licenses by: Ensuring mechanisms are in place to track due diligence requirements and actions. Working with the University Research Office’s Financial Specialist to monitor receipt of minimum annual royalties, license fees, milestone fees, and patent reimbursement costs. Maintaining a working relationship with licensees to ensure continued performance and a healthy relationship. Drafting and negotiating contracts and license amendments as appropriate. Establishing a program for outreach to university faculty and staff researchers, including giving presentations during department meetings, classes, and similar events. Meeting with new research faculty to introduce them to Technology Transfer tools and services; support ongoing faculty education regarding intellectual property. Consulting with and advising faculty on IP ownership, protection, and licensing questions, meeting with faculty regularly and persistently. Planning and executing professional development activities by participating in workshops, seminars, and training. Performing other duties as assigned.

Company info

University of Idaho.
P.O. Box 444332
Moscow
Idaho
United States 83844-4332
Website : http://www.uidaho.edu

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