Senior Licensing Officer and Licensing Officer, Engineering – The Ohio State University

 

The Ohio State University is committed to furthering their research, innovation, and commercialization efforts, and they need a strong, diverse, and motivated licensing team to reach these goals.

Ohio State has a breadth and depth that few universities possess.  They strive to make the right connections, by forming mutually-beneficial relationships that positively impact society by advancing innovation, developing talent and driving economic success.

They work closely with inventors, companies, entrepreneurs, investors and other organizations by connecting the right people and resources to fill gaps and solve complex problems. Learn more at http://oied.osu.edu.   

Offices within the Corporate Engagement Office include: Technology Commercialization, Corporate Business Development, New Ventures, & Economic Development.

FY21 Stats: 

Invention Disclosures: 306
Patents Issued: 247
Deals: 63

Ohio State is one of only a few universities in the U.S. that, in a single location, houses 15 different colleges, including seven health sciences colleges and a college of agriculture.

At Ohio State, you will have all of the tools that are needed—the creative minds, the expertise, the experience and the world-class facilities—to discover innovative solutions to complex problems. 

Ohio State research by the numbers (FY 2021):

  • $1.236 billion: Total research and development (R&D) expenditures
  • $581 million: Federal R&D expenditures

Read more about research at Ohio State: https://erik.osu.edu/facts-figures.   

The Opportunities

The Senior Licensing Officer – Engineering (“SLO”) is responsible for identifying technologies with commercial applications, evaluating the commercial potential of technologies, identifying potential licensees, preparing non-confidential technical information for marketing purposes, developing and implementing specific marketing strategies for each technology, and drafting and negotiating mid- to large-sized license agreements and other types of agreements including material transfer, collaboration and nondisclosure agreements. They are responsible for performing their own negotiations related to the Intellectual Property (IP), as well as demonstrating valuation and IP understanding.

The SLO may also be responsible for mentoring and supporting licensing analysts, licensing officers and student interns. The SLO will be a visionary and inspiring team member who is committed to fostering an inclusive, innovative, and high performing culture with a varied group of people representing diverse ideas, perspectives, and backgrounds.

SLO Responsibilities:

30%: Actively working with the inventors and other staff at the university to develop plans for commercialization of the technology, including investor presentations, market analysis, development plans, business plans and intellectual property assessment. Engaging with the inventors and their corresponding departments/colleges to increase the quantity of quality invention disclosures. 

20%: Managing a large, broad portfolio of technologies (>100) and independently evaluating the commercial potential by identifying new uses, markets, market size, competing technologies through the use of personal knowledge of emerging technologies, information from experts and on-line databases.  Ensuring compliance of licensee with the terms and conditions of the agreement. Monitoring external contractual obligations, milestones, and deliverables within third party contracts.    

20%: Actively marketing the technology portfolio. Investigating new technologies/products to determine if there is a market need and determines if the market can support the technology.  If a market need exists, evaluates the size of the market and the value of the technology.

20%: Serving as the lead negotiator and successfully negotiating terms for licenses and options, including when appropriate, equity terms and conditions.  Being responsible for negotiations related to the Intellectual Property (IP), as well as demonstration of valuation and IP understanding.

10%: Managing on-going patent prosecution by outside patent counsel to assure that the patent strategy is followed, expenses are controlled, and patent, copyright, trademark, and other Intellectual property rights are properly protected.  Facilitating the patent preparation by working with patent attorneys (in-house and outside counsel) and the inventors to maximize the possible claims of the Invention.  

The Licensing Officer – Engineering (“LO”) is responsible for identifying technologies with commercial applications, evaluating the commercial potential of technologies, identifying potential licensees, preparing non-confidential technical information for marketing purposes, developing and implementing specific marketing strategies for each technology, and drafting and negotiating small to mid-sized license and option agreements. Responsible for performing own negotiations related to the Intellectual Property (IP), as well as demonstrating valuation and IP knowledge.

The LO may receive some mentorship and coaching from Senior Licensing Officers or other team members to help them advance their knowledge, mastery, and independence.

LO Responsibilities:

30%: Deal Negotiation and Licensing. Researches existing technologies/products. Develops a licensing strategy for technologies in the portfolio with moderate supervision. Identifies and presents new technology to potential qualified businesses. Serves on deal teams with a small portfolio of deals as lead. Successfully negotiates terms for licenses and options under moderate supervision by a Senior Licensing Officer.

30%: Strategic IP and Marketing. Determines when IP should be marketed and with an emphasis on strategic alignment with college strategic plans and bundles of IP (when applicable) that maximize the commercial impact. Linking current IP with emerging research from the faculty in order to expand product scope and commercial potential. Implement and support marketing campaigns through multiple channels including direct outreach and third-party marketing services with moderate supervision by a Senior Licensing Officer.

25%: Faculty outreach and invention disclosure cultivation. Actively works with faculty on campus to enhance faculty satisfaction and engagement with the Technology Commercialization Office (TCO). Increase quantity of quality of invention disclosures received by the TCO. Help to inform and activate the academic community around technology commercialization.

15%: Intellectual Property Filing and Management. Successfully manages a small to mid-sized IP portfolio of technologies and evaluates the commercial potential by identifying new uses, markets, market size, competing technologies through the use of personal knowledge of emerging technologies, information from experts and on-line databases with moderate supervision. Determines when research should be protected with the guidance of a Senior Licensing Officer. Manages on-going patent prosecution by outside patent counsel to ensure that the patent strategy is followed, expenses are controlled, and patent, copyright, trademark, and other intellectual property rights are properly protected with moderate supervision.

The Successful Candidates

The ideal candidates will be visionary and inspiring team members who are committed to fostering an inclusive, innovative, and high performing culture with a varied group of people representing diverse ideas, perspectives, and backgrounds. Other preferred characteristics include:

  • The ability to work in a complex organization and further the goals and objectives of technology commercialization at The Ohio State University.
  • Process and metrics-oriented and committed to continuous improvement.
  • Embraces data-driven decision-making.
  • Acts with urgency in all stakeholder interactions.
  • Self-motivated, effective verbal and written communicator, executive presence and demonstrates high emotional intelligence.

Senior Licensing Officer:

  • Minimum of six (6) years of experience in any combination of corporate licensing, university technology transfer and/or industry technical roles within research or engineering.
  • Master’s Degree – Field of Study: Physical science, engineering, a related field, or equivalent combination of education and experience.
    • Preferred degrees: Electrical and Computer Engineering, Computer Science, Mechanical and Aerospace Engineering, Physics, Chemical Engineering, and Material Science.

Licensing Officer:

  • Minimum of four (4) years of experience in any combination of corporate licensing, university technology transfer and/or industry technical roles within research or engineering.
  • Master’s Degree – Field of Study: Physical science, engineering, a related field, or equivalent combination of education and experience.
    • Preferred degrees: Electrical and Computer Engineering, Computer Science, Mechanical and Aerospace Engineering, Physics, Chemical Engineering, and Material Science.

Interested in Applying?

The Ohio State University has exclusively retained Gardner Innovation Search Partners to manage this search. Gardner Innovation Search Partners is the top technology transfer recruiter in the world, and is committed to presenting a diverse slate of candidates who possess the skills, expertise, and enthusiasm to thrive in this role.

Interested applicants should send their resume, a non-confidential deal sheet, and any questions to:

Lisa Rooney, Recruiter

lisa@gardnerisp.com

740-251-7390

Glen Gardner, Recruiter

Glen@gardnerisp.com

614-354-8400

Dave Winwood, Recruiter

David@gardnerisp.com

919-673-4080

Gardner Innovation Search Partners is committed to diversity in both people and ideas. Read more about our commitment to diversity and inclusion here: https://gardnerisp.com/diversity-inclusion/.

Read the full position specification here.