Licensing Associate

Updated: about 2 months ago
Location: College Station, TEXAS
Job Type: FullTime

Job Title

Licensing Associate

Agency

Texas A&M Engineering

Department

Commercialization And Entrepreneurship

Proposed Minimum Salary

Commensurate

Job Location

College Station, Texas

Job Type

Staff

Job Description

Texas A&M Engineering Experiment Station Office of Commercialization and Entrepreneurship (TEES C&E) is searching for a Licensing Associate to join their team to facilitate the transfer of new discoveries from Texas A&M Engineering research to commercialization licensees in order to benefit the public.

For 100 years, TEES has performed groundbreaking engineering research and developed technologies to address state and national innovation challenges. Our research activities focus on key technology needs in areas including energy systems and services, national security, infrastructure, healthcare, materials and manufacturing, information systems and sensors. Our other activities include industry outreach, education and training. A primary goal of the Office of Commercialization & Entrepreneurship is to use licensing to catalyze the translation of TEES inventions into products and services that benefit society. We typically use commercialization vehicles such as licensing, start-up ventures, and sponsored research in our technology translation activities. The Licensing Associate will be an integral member of the C&E organization in its mission of enhancing the impact of TEES innovative technologies. in the realization of this and other TEES goals.

The Licensing Associate will be responsible for supporting the management of a portfolio of intellectual property originating from Texas A&M Engineering Research. This position evaluates an assigned portfolio of innovations in various stages of development, tangible research properties, and copyright materials developed from Engineering Research funded programs within the A&M System for technical utility, commercial potential, and available protection under federal and state statutes. The Licensing Associate, under direction of the Licensing Director, accomplishes the transfer of proprietary research results to commercial applications through license agreements with industry partners.

Responsibilities:

  • Assist/advise faculty and researchers in the process of invention disclosure and intellectual property matters.
  • Review, analyze and evaluate new disclosures for technical development, patentability, commercial potential, and practical utilities.
  • Assist the Licensing Director to recommend strategies for statutory protection and best path to market.
  • Coordinate with external System contracted law firms on all patent filing related matters.
  • Conduct market research, projection and valuation of technologies.
  • Contact potential licensees and explain the possible utilities and value of new innovations.
  • Propose and negotiate, with oversight of the Licensing Director, reasonable terms and conditions for licensing rights to use technologies with potential licensees.
  • Support post-licensing activity as needed.
  • Interact with Texas A&M Technology Commercialization support staff to ensure assigned disclosure and agreement information is accurate.
  • Interact with TEES Corporate Relations, TEES Contract Office, Sponsored Research Services, TEES administration, and departments as a resource for intellectual property matters.
  • Interact with other Texas A&M System member commercialization offices regarding matters of common interest.
  • Assist Licensing Director in educational activities to increase general awareness of intellectual property matters among faculty and staff.
  • Coordinate with other licensing staff regarding licensing opportunities, disclosure management, and technology transfer topics.
  • Identify prospective licensees for a given invention through research, networking, personal contacts and communicating with inventors.
  • Assist in drafting legal agreements for patent licenses and options, confidential disclosures agreements, interinstitutional agreements and other technology transfer agreements.
  • Work with faculty/inventors to establish strategies for maximizing and leveraging value of their research efforts.
  • Other duties as assigned.

Required Education:

  • Bachelor’s degree in applicable field or equivalent combination of education and experience.

Required Experience:

  • Two years of related experience in business development, project management, and/or community relations.

Preferred Education:

  • Master’s and/or PhD in Engineering, Physical Sciences, or Computer Science. Candidates having a Juris Doctor (JD) may also be considered. 

Preferred Experience:

  • Experience in patent prosecution and intellectual property licensing.
  • Experience in both academia and industry technology transfer strongly preferred.
  • Experience in negotiating and implementing license agreements and other transactions with early stage technologies.
  • Hands-on experience in the preparation, review and execution of a range of business agreements including licenses, material transfer agreements, confidentially agreements and sponsored/collaborative research agreements.
  • Experience in technology transfer in academia or industry setting.

Knowledge, Skills, and Abilities:

  • Knowledge of word processing, spreadsheet, and database applications.
  • Experience using online patent analytics tools.
  • Ability to multitask and work cooperatively with others.
  • Strong analytical and organizational skills.
  • Excellent verbal and written communication skills.
  • Ability to present information clearly and concisely.
  • Ability to draft and interpret legal language in contracts and other documents.
  • Technical writing skills and ability to draft and read legal language in various contracts and other documents.
  • Familiarity with The Texas A&M University System (A&M System) policies relating to intellectual property.
  • Familiarity with the patent analytic tool Patent Inspiration and invention tracking tool Sophia .
  • Ability to work one-on-one with faculty and with sponsored research agreements.

All positions are security-sensitive. Applicants are subject to a criminal history investigation, and employment is contingent upon the institution’s verification of credentials and/or other information required by the institution’s procedures, including the completion of the criminal history check.

Equal Opportunity/Affirmative Action/Veterans/Disability Employer committed to diversity.


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