University of Waterloo

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Technology Transfer Manager - Information and Software Technology

Technology Transfer Manager - Information and Software Technology

Requisition ID 
2017-2254
Job Category  
Research
Department 
5470 - Office of Research
Job Status 
Regular Full-Time
Hiring Range 
$88,903 - $111,129

More information about this job

Overview

The Waterloo Commercialization Office (WatCo) is a functional group within the Office of Research that reports to the Director, Commercialization.

 

The Technology Transfer Manager will provide intellectual property management services consistent with the provisions of UW Policy. The Technology Transfer Manager plays an active role in the identification, protection and commercial exploitation of intellectual property (IP) developed by University researchers through a variety of commercial arrangements including licensing and start-up company creation.

 

In doing so, the Technology Transfer Manager interacts with university researchers to provide assistance and guidance in identifying, protecting, and commercializing IP discoveries in a variety of technical disciplines related to information technology (IT) & electrical and computer engineering (ECE), with a specific focus on supporting software - related innovations.

Responsibilities

Intellectual Property Assessment

  • Reviews Technology Disclosure documents Convenes interview with relevant IP creators to get further details\clarification including information in the Technology Disclosure document
  • Conduct prior art patent and literature search to form an opinion on IP patentability and freedom-to-operate
  • Completes assessments of technology in various potential market application spaces. This includes searching publicly available sources and securing direct feedback about the opportunity from companies in the identified markets Completes and submits a recommendation and justification report to be presented to Director, Commercialization
  • Independently manages all communications with the IP creators regarding the assessment and decisions made

Intellectual Property Management

  • Develop IP strategy for accepted projects. Identify appropriate patent agent (if needed) and retain to handle the formalities of drafting, filing, and prosecuting the patent
  • Management of the relationship with the patent agent including ensuring that the IP creator is adequately engaged with the patent drafting process in a cost effective manner
  • Review and provide first-level approval of all IP management invoices prior to submitting to the Director for final payment approval
  • Ensure all relevant information for their IP portfolio is entered into the Inteum (IP database software) and proactively monitor the overall status of their IP portfolio to ensure timely decisions related to costs and actions

Technology De-risking Support

  • Work with IP creator team to prepare and submit funding proposals for prototype development projects that serve to advance the commercial readiness of the IP opportunity. Meeting with private companies to get market feedback and securing support letters are typically required as part of such business case and proposal preparation activities
  • Marketing of prototype or demonstration project results to prospective private sector company licensing targets and/or startup company investors

Commercialization Support

  • Initiate proactive marketing strategies to potential industry licensees (or investors in the case of startup company opportunities) may include Develops commercialization plan and initiate discussions and related legal documents in support of arriving at fully negotiated agreements. Management of the negotiation process and completion of related documents and shall seek out support from Director and the Office of Research legal counsel as required

Other

  • Assistance with a range of activities that may result in special projects being assigned. Such as IP - Awareness workshops to campus audiences or presentations on UW commercialization activities to foreign delegations or to provide input\support to other Office of Research groups or broader UW functional groups

Qualifications

  • Bachelor’s degree in Computer Science, Software Engineering, Electrical and Computer Engineering or other related technical discipline
  • MBA (or other business diploma\degree) would be an asset
  • 5+ years of progressive experience in the private sector in a software development, systems integration, or wireless technology company in one or more of product management, technical sales\marketing, or operational management roles
  • Full life cycle software development experience from inception to the market, experience writing software code (e.g. C++) or experience with software architecture design, implementation and testing would be an asset
  • An additional 2 years of experience in university technology transfer, commercialization, or research partnership development would also be an asset
  • Strong Interpersonal Skills: Must be comfortable with technical and scientific themes in order to effectively communicate with academic faculty in developing IP and commercialization strategies. Further, the individual must be skilled at facilitating business discussions that bridge the gap between the academically- oriented nature of a University and bottom-line driven entrepreneurial goals of business sector partners and venture investors. The individual must possess a high degree of maturity, competence, and professionalism appropriate for interacting with senior industry partners, investors and members of the University administration
  • Demonstrated leadership experience and proven ability to engage multiple stakeholders to work collaboratively to build consensus in a complex environment characterized by competing priorities is essential
  • Excellent oral and written communication skills, including a comfort level and proficiency in public speaking and the ability to write effectively, authentically, and in a manner consistent with the quality and standard expected of University-level communications
  • Demonstrated knowledge and experience in negotiating commercialization deals (i.e., Licensing, start up formation), including managing the development of associated documentation to formalize such deals (i.e., term sheets, license agreements, incorporation, etc) (preferred but not mandatory)
  • Demonstrated ability to develop winning funding proposals and secure partnership agreements
  • Demonstrated project - management skills including financial management of project budgets
  • Demonstrated knowledge and experience in managing intellectual property - related matters (preferred but not mandatory)
  • Some demonstrated understanding of the patent prosecution process and how patents are classified and cited in order to undertake meaningful patent prior art search strategies