Job no: 511221
Work type: Staff Full Time
Location: UMass Amherst
Department: Technology Transfer Office
About UMass Amherst
UMass Amherst, the Commonwealth’s flagship campus, is a nationally ranked public research university offering a full range of undergraduate, graduate and professional degrees. The University sits on nearly 1,450-acres in the scenic Pioneer Valley of Western Massachusetts, and offers a rich cultural environment in a bucolic setting close to major urban centers. In addition, the University is part of the Five Colleges (including Amherst College, Hampshire College, Mount Holyoke College, and Smith College), which adds to the intellectual energy of the region.
About Research & Engagement
The UMass Amherst community engages more than 30,000 students, 1,400 faculty, and 5,000 staff in 11 schools and colleges with a wide variety of degree programs, research, and public service. More than 800 faculty lead sponsored research projects in many areas from basic to applied are sponsored by federal, state, and private sources with expenditures of more than $200 million in 2021.
The Licensing Associate will work closely with investigators to solicit invention disclosures, to evaluate technologies for patentability and commercialization potential, and to perform market analyses of commercialization potentials. The Licensing Associate will also help to identify, evaluate, and support projects with potential to establish new startup companies. Under the supervision of the Technology Transfer Office (TTO) Director, the Licensing Associate will initiate negotiations for licensing/option agreements and other related contracts. The Licensing Associate will work within TTO at the University of Massachusetts Amherst (UMA).
- Solicit Invention Disclosures – Identify technologies with commercial potential in assigned areas on campus. Lead engagement efforts and establish strong rapport with UMA investigators in those areas. Provide effective and efficient intellectual property and commercialization services to those investigators. Support the preparation of invention disclosures and educate investigators on University policies regarding technology transfer, intellectual property management, start-up companies and related technology commercialization issues.
- Evaluate technologies for patentability and commercialization potential – For each disclosed technology, determine the most appropriate form of intellectual property protection (patent, copyright, etc.) and whether technology meets the legal requirements for such protection. Perform market analyses of commercial potential by researching and evaluating the marketplace to determine commercial viability and economic potential of UMA-developed technology.
- Coordinate intellectual property protection – Based on the foregoing analysis, and in consultation with the inventors and the Director, decide whether patenting of each invention is warranted, and if so, assign and supervise an attorney in prosecuting each patent application until each patent issues. If patenting is not justified or is limited based upon current research findings, advise the inventors what data may help support and expand commercially viable patent claims. If patenting would not be economically or otherwise advantageous to UMA, offer the rights to the inventors. Where copyright protection is warranted, obtain copies of the materials to be protected and assist the operations manager in completing applications.
- Develop and execute invention-specific marketing plans – Through databases, networking, and personal knowledge, identify companies that may be interested in commercializing each invention, and directly contact business development professionals in those companies to solicit interest in licensing. Prepare technical invention descriptions and marketing materials to provide to companies and to post on national invention databases. Provide appropriate technical and patent information regarding inventions to industry for evaluation. Communicate industry feedback to UMA investigators and use feedback to refine commercialization plan for each invention.
- Startup support – Identify technologies and projects in University research labs that could form the basis of a startup company. Assist in the creation of startup companies and connect researchers to internal and external startup funding opportunities and resources, including the UMA’s I-Corps Site Program. Build and maintain partnerships within the UMA’s entrepreneurial ecosystem and be an engaged and active member of this ecosystem.
- Develop licensing strategies for inventions and negotiate contracts related to commercialization – Obtain and evaluate business and marketing plans from potential licensees. Initiate and carry out negotiations with identified companies for technology-specific term sheets and license agreements that balance company and university needs and interests (e.g., field of use, royalty rates and other fees, commercial development obligations). Draft and negotiate agreements related to commercialization, e.g. license agreements, option agreements, inter-institutional agreements, confidential disclosure agreement, materials transfer agreements, etc. Assure the execution of contracts and assist the operations manager in monitoring each company’s compliance with its terms and payment obligations.
- Manage intellectual property portfolio- Perform account management activities with respect to licensed technologies, including maintenance of the relationship with inventor, the licensee, and the University. Attend quarterly docket review meetings, and tailor patent cost proposals to availability of funds for the coming quarter. Obtain prior budget approval for all substantial patenting decisions and assist the operations manager in projecting downstream costs for each case. Balance budget management and portfolio management, and where appropriate discontinue prosecution of patent applications of lesser commercial potential.
- Performs other duties as assigned.
Minimum Qualifications (Knowledge, Skills, Abilities, Education, Experience, Certifications, Licensure)
- Master’s Degree in Engineering, Computer Science, or Physics plus 2 years experience in the commercialization of technology; Or, Bachelor’s Degree in Engineering, Computer Science or Physics plus 4 years experience in the commercialization of technology
- Excellent oral and written communication skills and excellent interpersonal skills required.
- The ability to interact effectively in both the academic and corporate cultures. Must be comfortable communicating with scientists, research sponsors, industry representatives and patent attorneys.
- The ability to work both independently and within a team environment, and to work under pressure to meet deadlines is required.
- Must be a highly self-motivated professional with exceptional sales, marketing and negotiation abilities.
- Must be detail oriented and able to simultaneously manage numerous projects.
- Due to export control compliance reasons, candidates for this position must be qualified as a U.S. Person under the regulations [15 CFR Parts 730-774 & 22 CFR Parts 120-130].
Preferred Qualifications (Knowledge, Skills, Abilities, Education, Experience, Certifications, Licensure)
- Doctoral/terminal degree in Engineering, Computer Science, or Physics.
- Experience in drafting and negotiating various agreements involving intellectual property.
- Knowledge of intellectual property law and licensing practices.
Physical Demands/Working Conditions
Typical office environment.
M-F; 8:00am – 5:00pm
This role has the potential for on campus or remote work according to our flexible work guidelines. Reliable internet access is required for remote work.
Special Instructions to Applicants
Review of applicants will begin January 18, 2022 and continue until the position is filled. Required application materials include: a cover letter, resume, and names and contact information for three professional references.