| Department: | Office of Research-Intellectual Property Management Group0 | January, 2008 | |
| Grade: |
USG 15 35 hr/wk |
Reports to: | Director of Commercialization |
There is an ever increasing focus and emphasis from both federal and provincial governments to enhance the overall capacity of Canadian universities to transfer the significant investment in the creation of research outputs to the broader societal and economic benefit of Canada. This commercialization focus has been acknowledged by the university community through the AUCC’s commitment to the federal government (“Framework of Agreed Principles on Federally Funded University Research between The Government of Canada and the Association of Universities and Colleges of Canada, November 18, 2002) to triple the commercialization output of Canadian universities by the year 2010. Given the increased importance attached to achieving technology transfer success, the University has recently entered into several strategic initiatives to bolter its capacity and success in achieving successful technology transfer outcomes. By way of example, at the present time the University is an active participant in the C4 Initiative, a federal and provincial initiative funded at approximately $6.5M over three years to develop a south-western Ontario university technology transfer network of shared human and financial resources to bolter the collective efficiency and productivity of each institutions technology transfer capability. The C4 Initiative1 is a high profile collaboration that has management oversight provided by a Board of Directors comprised of the Vice Presidents of Research from each of the six south-western Ontario universities as well as industry leaders. More recently the Ontario government’s continued investment in the Ontario Research Fund (ORF) program has introduced a significant requirement that all funded projects provide credible technology transfer plans and to further demonstrate an operational capacity to achieve the technology transfer milestones specified in the proposals. By way of example, in 2006 the University received approximately $12M over five years in funding for a research projects related to UW’s strategic multidisciplinary WATCAR initiative, Initiative for Automotive Manufacturing Innovation (IAMI), which included $375,000 specifically allocated to supporting salaries for technology transfer staffing support. In the most recent 2007 submission of ORF proposals, approximately 6 different multi-million dollar research initiatives were submitted by various UW research groups, each requiring a technology transfer plan and commitment to provide institutional capacity towards achieving the specified technology transfer milestone deliverables.
The introduction of technology transfer deliverables in research projects is a growing trend that will negatively impact the University’s ability to attract research funding unless a significant investment in the University’s technology transfer capacity is not made in the very near term. In order to respond to this need to develop institutional technology transfer capacity there is a current requirement to create a dedicated management role in the Office of Research – Intellectual Property Management Group to manage these strategic technology transfer initiatives and to provide supervision of the associated human resources supporting these initiatives.
GENERAL ACCOUNTABILITY
This position reports to, and is overall accountable to, the Director of Commercialization within the Intellectual Property Group (IPMG) of the Office of Research. The Manager – Strategic Initiatives (MSI) will provide strategic and operational support in achieving the objectives of the UW technology transfer and licensing program, in accordance with Policy # 73- Intellectual Property Rights as well as achieving similar technology transfer objectives as specified under the various multi-stakeholder strategic initiatives supported by UW.
The MSI shall be responsible for taking a leadership role in securing the technology transfer objectives and for supervising any associated staff for those strategic research and technology transfer initiatives supported by UW, such as the previously described IAMI initiative. Additionally the MSI will also be responsible for formulating the requisite technology transfer plans for future strategic UW research proposals and for securing the technology transfer objectives arising from such funded research initiatives. It is anticipated that these multi-year, multi-institutional, and multi-million dollar research initiatives shall also require the hiring of dedicated technology transfer staff to operationally support the commercialization of intellectual property developed from the research programs. The MSI shall thus be responsible for managing the budget items allocated to achieving the technology transfer goals and hiring and supervising all such operational technology transfer staff under these strategic research initiatives. The MSI shall also be accountable to the IAMI Board of Directors for managing and achieving the technology transfer objectives of the IAMI research project.
The MSI shall also provide operational support to the Director of Commercialization in achieving the goals and objectives of the University’s participation in the C4 Initiative (Coordination, Cooperation, Collaboration, Commercialization) and shall be responsible for supervising the associated staff under this program and achieving the related milestone deliverables. The MSI shall also provide budget management over any C4-Proof of Principle projects awarded to fund the commercial advancement of UW technologies. For C4 activities the MSI shall be accountable to the Director of Commercialization and the other Director’s of the participating C4 universities.
More generally, the MSI shall provide operational support to the Director of Commercialization in achieving the goals and objectives of the IPMG by managing the late stage commercialization activities associated with the University’s investment in its intellectual property patent portfolio. Specifically the MSI will enhance the operational capacity and productivity of the IPMG through the application of demonstrated technology transfer skills and experience and through the proactive liaison with University faculty members. The MSI will interact extensively with the Waterloo research community and administration, with other institutions and technology transfer associations, with the public and private sectors including venture capital providers, legal firms, the Accelerator Centre , Communitech and with potential funders of intellectual property advancement such as NSERC and MSI . For IPMG specific initiatives the MSI shall be accountable to the Director of Commercialization and the Associate V.P Commercialization.
STRATEGIC INITIATIVES
Initiative for Automotive Manufacturing Initiative (IAMI)
The MSI will manage the day to day operations and shall supervise the technology transfer objectives and any dedicated staff associated with the University’s participation in current strategic research initiatives (ie. WATCAR-IAMI) and future such strategic research initiatives. Initially a significant portion of the MSI’s time (approximately 50%) shall be dedicated to achieving the following technology transfer objectives of the IAMI research initiative :
Operational Support
The MSI shall act as liaison with IAMI collaborative partners (McMaster University, University of Waterloo, Ministry of Research and Innovation and automotive industry companies) and provide technology transfer and commercialization services related to intellectual property developed from IAMI projects. Technology transfer support shall include establishing a commercialization sub-committee comprised of members from the IAMI advisory board supplemented by appropriate automotive industry representation. Additionally, the MSI shall be responsible for establishing an internal commercialization working group involving the stakeholder proponents of the IAMI project (ie. McMaster University’s Xerox Centre for Engineering Entrepreneurship and Innovation (XCEEI), the University of Waterloo’s Centre of Business Entrepreneurship and Technology (CBET) ) to identify commercially viable technologies and to initiate projects with the respective business program students to develop business plans or marketing studies in support of commercially viable IAMI technologies. The MSI shall implement an annual review process to evaluate commercialization project progress, to report progress and seek advice from the commercialization sub-committee and advisory board, and to take appropriate action to further advance through interaction with IAMI industry partners (or other Ontario based industry partners) or to terminate commercialization projects. The MSI shall be expected to provide advice and direct support in securing appropriate follow-on commercialization funding to take IAMI commercially viable technology opportunities to the next level of commercialization readiness (ie. OCE- Market Readiness Program, NSERC- Idea to Innovation Program, C4- Proof of Principle Program). The MSI is expected to achieve two transfers of commercially viable technologies by year 2 of the IAMI initiative and five transfers of technology by year 5 of the IAMI initiative.
Education and outreach
The IAMI initiative also specifies a significant level of technology transfer education and outreach to IAMI researchers, IAMI industry partners, XCEEI\CBET students, government, and the Ontario automotive sector in general. The MSI shall be expected to develop and coordinate delivery of 12 IAMI seminars per year (expected attendance of between 25-75 people per seminar) that highlight new innovation developments in the automotive sector, that showcase new technologies developed under the IAMI research projects, and that facilitate discussion on pursuing new automotive research initiatives and seeking appropriate research funding sources. The MSI shall also be responsible for developing and delivering 2 workshops per year targeted at IAMI researchers and industry partners to present progress on various research projects and to stimulate collaborative discussion amoungst the various stakeholders. The MSI shall also facilitate the development and delivery of 2 short courses per year targeted at university students and industry scientists\engineers to facilitate knowledge transfer arising from the various IAMI research projects. Additionally the MSI shall develop and deliver on an annual basis a joint IAMI-CBET-XCEII workshop on innovation and business opportunities within the automotive sector. Generally the MSI shall be expected to participate in any outreach forums that serve to raise the profile of the importance of automotive research in Ontario by participating in such events as UW’s Campus Days to raise awareness of automotive technical career opportunities to high school students.
Accountability
The MSI shall be accountable to the Director of Commercialization and the IAMI Board of Directors and the MSI shall also be responsible for managing all the budget items allocated to securing the technology transfer goals and objectives of the IAMI research project.
Other Strategic Initiatives
This position anticipates that the University will continue to be successful in securing significant research funding from commercially oriented funding programs (eg. Ontario Research Foundation –ORF) for strategic research thrusts, such as the IAMI research initiative focused on the automotive sector. These commercially oriented research funding programs require the proponents of research proposals (usually multi-institutional and involving industry partners) specify a viable plan to advance the commercialization of any intellectual property arising from the research activities. Such commercialization plans must be backed by a demonstrated internalized capacity to actually achieve the commercialization objectives and milestones. Thus it is envisioned that the MSI of this position shall be responsible for supporting UW faculty to secure future such research projects by assisting in the development and specification of appropriate commercialization plans as part of the proposal process. Should UW be successful in securing such commercially oriented research projects the MSI shall be responsible for securing the objectives of the commercialization plans which in most instances include the hiring (dependent on continued project funding) of dedicated technology transfer professionals to implement the commercialization plans as for example embodied within the IAMI initiative.
C4 OPERATION SUPPORT
The MSI shall provide operational support to the Director of Commercialization in achieving the goals and objectives of the University’s participation in the C4 Initiative (Coordination, Cooperation, Collaboration, Commercialization) and shall be responsible for supervising the associated staff under this program, achieving the related milestone deliverables, and complying with the associated reporting requirements (approximately 30% of time). The MSI shall also provide leadership in selecting UW technology projects for proposal development and submission to the C4 Proof of Principal (POP) funding program. The MSI shall provide management direction to UW’s C4 staff in the preparation of such POP proposals and in the execution of any funded projects. The MSI shall have overall budget management and accountability for any POP projects awarded to fund the commercial advancement of UW technologies. For C4 activities the MSI shall be accountable to the Director of Commercialization and the other Director’s of the participating C4 universities.
IPMG SUPPORT
The MSI shall also provide operational support to the Director of Commercialization in matters pertaining to intellectual property management and commercialization through the provision of advice and assistance to University members concerning the interpretation and application of the provisions of Policy #73-Intellectual Property (approximately 20% of time). In this role, the MSI shall also have an elevated responsibility in managing the University’s intellectual property portfolio on behalf of both the University and the researchers who have entrusted the commercial exploitation of their intellectual property to the University. The MSI will have an initial priority focus on supporting and fostering commercialization opportunities generated from UW’s strategic investment and focus in the Faculty of Engineering’s WATCAR research initiatives. In undertaking this stewardship role, the MSI is accountable for initiation, negotiation and management of intellectual property protection and commercialization activities, including the negotiation and execution of licenses and numerous other agreements required to commercialize intellectual property. Additionally the MSI shall be assigned the responsibility to manage the IPMG’s internal prototype development fund and shall have the independent discretionary spending decision to fund investments in prototyping activities for the more commercially advanced technologies in the IPMG portfolio. The MSI, directly or through delegation to staff, provides assistance to other sections of the Office of Research, such as CRAIG , in the negotiation of intellectual property provisions, particularly licensing terms pertaining to sponsored research when a sponsor requests early definition of a license prior to project commencement. The MSI will develop effective working relationships with receptor industries and, in addition, develop appropriate contacts to assist in the creation of spin-off companies. As determined in conjunction with the Director of Commercialization, the MSI will also directly and actively participate in government and institutional initiatives designed to improve and expand the innovation process in Ontario and Canada and work with associations with a similar mandate.
POSITION CHALLENGES
Some challenges faced by the MSI include: (a) managing the human and financial resources associated with the University’s achievement of stated technology transfer goals specified in the WATCAR-IAMI, C4 Initiative, and future anticipated strategic initiatives; (b) attracting technology disclosures to the IPMG in a “creator ownership” environment, (c) assessing and managing issues related to Policy #73 including: (i) ascertaining the ownership of intellectual property in accordance with the creator-own provisions of Policy # 73; and (ii) finding the resources necessary to actively prospect for intellectual property created at the University to ensure an adequate flow of technology opportunities; (d) assisting in the management and resolution of the ever increasing complexity of intellectual property issues arising out of collaborative research initiatives and industry demands to control/own university intellectual property; e) securing technology commercialization funding support from a variety of government programs; f) achieving successful tangible commercialization outcomes from the IAMI, C4, and UW investment in their technology portfolios; g) creating the various multi-stakeholder committees and the creation and delivery of relevant training\outreach programs under the IAMI initiative; h) managing the multiple accountability relationships in a matrix style management organization (eg. IAMI Board of Directors, other C4 university technology transfer managers, UW Director of Commercialization, and UW Associate VP of Commercialization)
The following information provides some basic metrics for the IPMG
Commenced-1991
Staff-3 (expanding to 7 by end of 2007)
Budget- as determined by the Vice President, University Research
Active Projects (2003)-55
Patents ~ 160(2005)
Technology Disclosures Annually (2003)-15
Royalties/License fees (2003)- $850K
Spin-off Companies (2003)-13
License Agreements (2003)-.>25
It should be noted that evaluation of the overall performance of the IPMG by analysis of, or comparisons between, annual metrics can be problematic since performance in a given time period and annual metrics are typically not coincident. In particular, there is normally a time lag between technology disclosures, patenting a technology and the ensuing royalty stream from a licensee or start-up company of several years.
Supervise, direct and mentor the C4 Initiative technology transfer staff (currently 3 staff members) as well as for any future staff to be hired in support of the University’s anticipated success in securing future strategic research initiatives (i.e ORF projects).
- Achieve and report on IAMI quantified deliverables (refer to IAMI activities above), and other future strategic research initiative deliverables as may be specified
- Achieve and report on C4 –POP projects (expected to secure at least 3 projects\year)
- Mentor and supervise other IPMG staff as may be required
-Assist members of the University with understanding and realizing the potential value of their intellectual property, including capitalizing on commercial opportunities.
-Provide advice and guidance to the Director of Commercialization, Associate V.P Commercialization and other members of the Office of Research and members of the University with respect to intellectual property matters.
-Develop community business/government connections required to assist and promote University technology opportunities with a particular focus on supporting the commercialization of technologies from the UW – WATCAR research initiatives.
- Coordinate and achieve late stage commercialization licensing or start-up company creation activities in support of IPMG. C4, and IAMI more commercially ready technology opportunities
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