Contracts and Licensing Specialist

Working Title:	Contracts and Licensing Specialist
WHOI Position:	Contracts and Licensing Specialist
Date:	08/06
Position Code:	2571
EEO Code:	227

Job Summary
Reporting to the Vice President, External Relations, the Intellectual Property Officer will evaluate the Institution's intellectual property portfolio, patents and copyright materials for their technical utility and commercial potential. Acts as primary liaison to Institution principal investigators and engineers to assist in prospective intellectual property ventures.

Major Duties

Evaluates the Institution's intellectual property portfolio including patents in various stages of development, tangible research properties and copyright materials for their technical utility, commercial potential and available protection under federal and state statutes and in foreign countries.
Targets potential licensees, negotiates terms and conditions for transactions and drafts the necessary legal documents to complete the licensing of intellectual property rights for commercial development to benefit the public.
Provides extensive one-on-one interaction with Institution principal investigators and engineers, potential licensees, patent and contract attorneys, industrial scientists, business development executives, entrepreneurs and venture capitalists.
Acts as the primary liaison to the Institution's principal investigators and engineers to assist in crystallizing inventive ideas and making disclosures to the Institution.
Participates in educational and service programs to the Institution related to intellectual property issues and awareness.
Works closely with PI's, engineers, Director of Shore Operations and Technology Transfer, and Grants and Contract Services. Provides advice and assistance to Director of Research regarding structuring and negotiating research collaborations, complex government/industry-Institution relationships, intellectual property laws, publications and liability/warranty issues in sponsored research programs.
Represents the Director and the Institution at professional meetings, technology trade conferences and investment and economic development meetings and events.
Assists with asset sales to third parties, export licensing, and boat donations.
Performs other related duties as the supervisor deems necessary.

Desired Education/Experience for Hiring
Master's degree or equivalent knowledge of, and interest in, scientific research and technical innovation combined with hands on experience. Three or more years experience in technology licensing as evidenced by negotiated contracts with third parties. Strong inter-personal skills. Ability to visualize potential practical utilities of new discoveries and results of scientific investigations or technical innovation. Skills in bridging basic research and applied uses of its results. Skills in market research and projection and valuation of technologies, skills in negotiation to obtain reasonable results without being overbearing. Ability to draft and translate legal language in various contracts and other documents including but not limited to non-disclosure agreements, confidentiality agreements and material transfer agreements. Ability to use databases and on-line resources to assess up to date market and company information. Familiarity with Institution policies and guidelines relating to intellectual property and interactions with industry required.

Last updated: June 19, 2013

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