Senior Licensing Associate

Stony Brook University • Stony Brook, NY

1d • Hybrid

About The Position

The Senior Licensing Associate will be responsible for managing a portfolio of technologies in the engineering and physical sciences, including identifying, evaluating, marketing and licensing inventions and software developed by SUNY Stony Brook and Research Foundation faculty and staff. The incumbent is responsible for such activities being conducted under optimal financial and legal conditions and in compliance with the SUNY patent and copyright policy and sponsor regulations. Ideally, the successful incumbent must have technology transfer experience, a proven track record of successfully negotiating intellectual property license agreements, other complex agreements (e.g., sponsored research agreements, collaboration agreements or equity agreements) and demonstrated experience drafting and reviewing contracts.
Specific activities include, but are not limited to, evaluating the commercial potential of inventions, as well as preparing non-confidential material, developing and implementing marketing strategies for each technology. In addition, the incumbent will be responsible for drafting and negotiating terms of commercialization agreements and other agreements including, but not limited to, options, licenses, material transfer agreements and confidentiality agreements. The incumbent may supervise interns and other junior members of the licensing team. The incumbent may occasionally need to function as an alliance manager on ad-hoc basis for collaborations associated with technologies in their portfolio. The incumbent will be responsible for activities associated with ensuring post agreement compliance.
The successful incumbent will have excellent customer service and interpersonal skills, exercising strong organizational and time-management skills with an exceptional attention to detail, as well as the ability to successfully manage a complex and large portfolio of diverse technologies and carry multiple, extended projects concurrently through to completion. Essential for this role is the adeptness to work independently as well as part of a team with a collaborative approach to problem solving. The successful incumbent will be a self-starter with excellent verbal and written communication skills.

Requirements

• Bachelor’s degree (foreign equivalent or higher) in Electrical / Computer / Software Engineering, Materials Science, Physics, or other physical science related disciplines.
• Five (5) years of direct, full-time technology transfer experience (University or Industry) in technology scouting/assessment, intellectual property licensing, business development and/or legal.
• At least two (2) years’ experience successfully negotiating intellectual property agreements including licenses, options, term sheets or other complex agreements (e.g., sponsored research agreements, collaboration agreements, equity agreements) in a lead role.
• Experience drafting and reviewing intellectual property agreements.

Nice To Haves

• Master’s degree (foreign equivalent or higher) in Electrical / Computer / Software Engineering, Materials Science, Physics, or other physical science related disciplines.
• Master’s in Business (foreign equivalent or higher).
• Juris Doctor (foreign equivalent or higher).
• Two (2) or more years of experience working in a university Technology Transfer Office.
• Licensed Patent Agent.
• Registered Technology Transfer Professional (RTTP) or Certified Licensing Professional (CLP).

Responsibilities

• New technology evaluation (technology evaluation and characterization), including overseeing such activity of Junior Licensing team member(s) and forming decisions regarding how to proceed with the technology
• Business development type activity (engaging with potential licensees, developing and reviewing licenses, options and term sheets, drafting and negotiating license agreements)
• Marketing and gathering KOL (Key Opinion Leader) /industry feedback on a portfolio of technologies and overseeing Junior Licensing team members.
• Faculty support and education with respect to inventions, intellectual property, commercialization, and office policy and procedure.
• IP portfolio management and post-agreement management activities
• Marketing sheet development, including overseeing Junior Licensing Staff of the same.
• Technology portfolio support, including, but not limited to, assisting with patent prosecution and assisting with patent budget planning.
• Supporting Office of Sponsored Programs and Risk Management Functions
• Other duties as assigned.

What This Job Offers

• Job Type: Full-time
• Career Level: Mid Level