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Technology Transfer Officer

Department: Technology Transfer & Licensing Office/Office of Research Effective Date: February, 2008
Grade: USG 14 Reports to: Director of the Commercialization

General Accountability

The Technology Transfer Officer position reports to and is accountable to the Director of the Commercialization of the Intellectual Property Management Group [IPMG] within the University’s Office of Research.  The Technology Transfer Officer is expected to support the broader goals of the Office of Research and more specifically the mission of the IPMG in providing intellectual property management services consistent with the provisions UW Policy #73-Intellectual Property. The Technology Transfer Officer plays an active role in the identification, protection and the commercial exploitation of intellectual property (technology) developed by  University researchers through a variety of commercial arrangements including licensing and start-up company creation.

Nature and Scope

The Technology Transfer Officer is responsible for interacting with University researchers to identify new technologies and to assess their commercial potential and suitability for patent or copyright protection. When a decision is made to invest in intellectual property protection, the Technology Transfer Officer shall thereafter have the responsibility to seek out potential private sector receptors to commercially exploit the intellectual property (technology).  Exploitation of the University’s technology transfer assets may require the Technology Transfer Officer to prepare business cases or plans, facilitate the creation of technology prototypes or demonstration projects, and prepare funding proposals to various government programs that support commercialization of new technology.  To meet this responsibility the Technology Transfer Officer must possess advanced communication and interpersonal skills to match the academically oriented needs, abilities and research mindset of University researchers with bottom-line driven entrepreneurial goals of business sector partners and venture capitalists.  The Technology Transfer Officer shall posses advanced negotiation skills to secure balanced technology transfer relationships and outcomes that protect the academic freedoms associated within a research academic environment while providing commercial partners with business opportunities that are realistically exploitable.  The Technology Transfer Officer ideally should possess some degree of legal, contract and patent administration knowledge in order to o engage in the contractual process of intellectual property protection as well as a reasonable level of business experience and acumen in order to understand and communicate new technology opportunities to potential external commercial partners. The Technology Transfer Officer will from time to time be expected to attend  meetings with private and government/public sector officials and to attend and\or make presentations at relevant conferences to support specific technology transfer activities and to promote and enhance the University of Waterloo public profile. The Technology Transfer Officer will from time to time be required to interact with the University's licensees, start-up companies or other commercial partners to monitor performance and to assist in solving any challenging business issues associated with such relationships. 

The Technology Transfer Officer’s role is undertaken in an increasingly challenging environment populated by an expanding number of active external participants including other academic institutions, industry, government, public and financial sector and is further challenged by the complexity of intellectual property rights  arising from collaborative research partnerships and ownership related issues resulting from UW creator ownership provisions in Policy #73.  The Technology Transfer Officer shall be expected to assist the Director in supporting the Office of Research’s industrial research contracts group (eg. CRAIG) to address intellectual property rights issues arising from University contract research activities.

The Technology Transfer Officer should possess the ability to work inter-dependently and manage multiple task or projects to meet deadlines while using independent judgement to manage confidential information with limited or no supervision.

POSITION CHALLENGES

 

Some challenges faced by the Technology Transfer Officer: (a) attracting technology disclosures to the IPMG in a “creator ownership” environment, (b) assessing and managing issues related to Policy #73  and patent prosecution activities including: (i) ascertaining the ownership of intellectual property in accordance with the creator-own provisions of Policy # 73; and (ii) facilitating the completion of internal documentation (i.e Technology Disclosure documents and Researcher’s Agreement) iii) initiating patent protection and liaising with patent agents and researchers to manage the patent prosecution process for technologies assigned; (c) assisting other OR functions (eg. CRAIG, Grants, International) 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; d) securing technology commercialization funding support from a variety of government programs;

e) proactively marketing IPMG technologies to industry and the investment community (eg. venture capitalists); f) achieving successful tangible commercialization outcomes such as startup company creation or license agreements.

Statistical Data

In general, the performance of the Technology Transfer Officer to support the effective commercialization of University of Waterloo technology can on a yearly basis be evaluated by numerical metrics (based on Canadian and US data accumulated for the AUTM Annual) such as:

i)        Number of technology disclosures assessed 

ii)        Number of patent filings processed

iii)       Number of Non-Disclosure Agreements processed

iv)       Number of prototype development projects initiated

v)       Number of license agreements processed

vi)       Number of research contracts secured resulting from         commercialization efforts

vi)       Royalty revenue generation 

vii)      Number of spin-off companies

NOTE:

The above statistical data varies from year to year and is almost entirely outside of the control of the IPMG and the Technology Transfer Officer. Reliance on any one specific numerical statistics to evaluate performance  is not usually helpful since overall performance achieved in any particular  time interval may not  be directly related to annual metrics. By way of example royalty revenue is typically uneven and unpredictable on an annual basis and the number of patent filings depends on the quality and number of technologies disclosed to the IPMG in any given year.  Performance evaluation by the Director is based on the overall performance of the Technology Transfer Officer in undertaking assigned tasks including  an  assessment of the Technology Transfer Officer impact on the positive or negative variance in the above statistical metrics as well as providing an acceptable standard of service to the various IPMG stakeholders.

Specific Accountabilities

The Technology Transfer Officer key accountabilities are as follows:

  1. Technology prospecting to increase the number of technology disclosures.
  2. Working closely with researchers and external patent agents to provide value added support for improving the quality of patent applications and managing the patent administration activities associated with portfolio assigned to the Technology Manager
  3. Initiating\implementing technology prototype development activities, including the preparation of funding proposals.
  4. Constant evaluation of the commercial viability of patented technology with a view to maximizing potential commercialization revenues while effectively managing the associated intellectual property costs and institutional risks.
  5. Seeking out commercial parties and negotiating appropriate intellectual property commercial agreements (eg. non-disclosure agreements, material transfer agreements, option agreements, license agreements, letters-of-intent, memorandum of understanding, etc.)
  6. Providing intellectual property rights advice and support to other Office of Research contracting functions (i.e CRAIG, Grants, International)
  7. Negotiating inter-institutional intellectual property agreements.
  8. Participating in meetings\initiatives as requested by the Director. 

 

Working Conditions