Licensing Manager

Case Western Reserve University • Cleveland, OH • 1h ago

POSITION OBJECTIVE

Working independently, the licensing manager is responsible for managing Case Western Reserve University invention disclosures (cases) submitted by faculty, staff and students, including the identification, evaluation and disposition of such inventions; obtaining appropriate intellectual property protection ; vigorously marketing technologies developed in the Case Western Reserve University School of Engineering, College of Arts and Sciences and School of Medicine, to industry; identifying and creating new start-up opportunities at Case Western Reserve University, and drafting and negotiating complex licensing agreements with industry; identifying sources of industry research sponsorship; participating in the development of initiatives to inform and educate university faculty, staff and students about technology transfer and nurturing a culture of entrepreneurship at Case Western Reserve University.

ESSENTIAL FUNCTIONS

Assess and when appropriate, commercialize Case Western Reserve University inventions across a portfolio of projects; primary activities include technology evaluation, patent filing and prosecution decisions, pre-marketing, corporate communications, and complex negotiations. Handle or manage the prompt and competent completion of analyses, evaluation, handling, disposition, and commercialization of inventions by university faculty, staff, and students, including the successful licensing or optioning of intellectual property rights. Work with university-approved patent prosecution legal services to construct and efficiently manage a portfolio of patents related to university inventions. Assist upper management in maintaining a roster of patent attorneys with experience and specialties relevant to the university s technology transfer efforts. (17%)

Identify and create new start-up company opportunities at the university, including selection of company management, applying for external funding, and negotiating License Agreements to the new company. Seek, develop, and maintain relationships with potential external licensing partners in industry, government, and the not-for-profit sectors. Structure and negotiate complex licensing agreements for commercialization of university-developed technologies. Coordinate the legal review and approval with the Office of General Counsel where appropriate. (17%)

Develop a technology specialization, becoming a technology commercialization expert in a particular technology focus area (for example, diagnostics, medical imaging, stem cells, drug discovery, medical devices, etc.). Oversee the follow-up and collection of royalties and other payments from active licenses. Foster and manage internal and external relationships relevant to disclosures and licensing. (16%)

Review and negotiate other non-license agreements within the office, including Confidentiality Agreements, Release Agreements, Royalty Split Agreements, Inter-institutional Agreements, Data Use Agreements, and intellectual property sections of Sponsored Research Agreements and Service Agreements, including the coordination of legal review and approval by the Office of General Counsel where appropriate. (10%)

NONESSENTIAL FUNCTIONS

Identify and encourage corporate sponsorship that can help develop technologies and lead to eventual licensing partners. (5%)

Assist in developing up-to-date technology transfer databases and reports for the university. (5%)

Produce technology transfer education and support programs for faculty, students, and staff at the university, including seminars, lectures, and guest teaching in Case Western Reserve University classes. (5%)

Ensure faculty adherence to the university's IP Policy and work to resolve unforeseen IP related issues or disputes. (5%)

Oversee licensing associ

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