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Intellectual Property Management Officer – Information Technology (IPMO-IT)


Office of Research – Intellectual Property Management Group (IPMG)

Effective Date: September 2006
Grade: 13/14 Reports to: Director of IPMG

General Accountability

C4 (Coordination, Cooperation, Collaboration, Commercialization) is a consortium comprising the University of Waterloo, the University of Guelph, the University of Western Ontario and McMaster University  that is funded through government Intellectual Property (IP) commercialization programs at the federal and provincial levels. Its objective is to maximize the use of the specialized resources  for the protection and commercialization of IP generated by the faculty, students and staff of each C4 partner. This will be achieved through sharing of resources across the institutions and, as appropriate,  standardizing operating practices and procedures in regard to IP. Wilfrid Laurier University and the University of Windsor are also participants in C4.

This position reports to, and is accountable to, the Director of IPMG. Approximately 40% of the position FTEs are dedicated toUW and 60% to other C4 Institutions The incumbent has responsibility for identifying and protecting IP developed by university researchers and also for commercializing IP through licensing and, when appropriate, start-up company receptors. In particular, the incumbent will enhance, expand and support commercialization of the Information Technology and Computer Engineering (IT & CE) portfolios at UW and the other C4 Institutions with emphasis on building and maintaining an active patent platform  The incumbent must be knowledgeable of IP policies and procedures at the C4 Universities.

Nature and Scope

The incumbent is responsible for interacting with university researchers at the C4 Institutions to provide assistance and guidance in identifying and protecting intellectual property discoveries in a variety of technical disciplines  related to IT & CE. The Officer is responsible for reviewing new IT & CE technology disclosures and providing technical advice to C4 Technology Managers concerning the commercial relevance and applicability of such disclosures. For those technologies deemed to be commercially interesting, the Officer assumes responsibility for managing the intellectual property protection process, including direction and assessment of prior art searches; managing, either internally or through external expertise, patent applications; and managing  any appropriate interaction between C4 partners. The Officer also  provides assistance   with negotiating suitable intellectual property terms for inclusion in research agreements with industry or other partners.

 The incumbent  will have : 1) the requisite technical and scientific knowledge as well as negotiation and interpersonal skills to provide an effective interface with the research - oriented academic environment; 2) advanced skills and demonstrated experience in patenting intellectual property; 3) sufficient  business experience to understand and communicate the commercial relevance of new technology opportunities to potential external commercial partners and internal C4 partners. The incumbent may be required to interact with university licensees and start-up receptors to monitor performance and to trouble-shoot technical and administrative issues associated with agreements pertaining to IP commercialization. The incumbent  will have the  requisite skills for matching  the academically oriented needs, abilities and temperament of university researchers with bottom-line driven entrepreneurial goals of business sector partners and venture capitalists.

The incumbent’s role is undertaken in a challenging environment populated by an expanding number of active external participants including the C4 Institutions, industry, government, and public and financial sectors. Additional challenging elements are  the complexity of intellectual property rights arising from collaborative research partnerships and ownership- related issues resulting from the IP policies  of the C4 Universities.

Statistical Data

Performance of the incumbent in commercializing technology   will be evaluated on a yearly basis, in part, against various numerical metrics (different sponsoring organizations may require different metrics), including but not limited to:ding but not limited to:

  1. Number of technology disclosures processe
  2. Royalty revenue generation  
  1. Number of non-disclosure agreements
  2. Number of license agreements
  3. Number of patent applications filed
  4. Number of prototype development projects
  5. Applications for available government funding for commercialization projects

In 2004, data for the C4 universities indicate;

Number of disclosures: 156

Patents filed: 92

Patents issued: 24

Licenses executed: 166

Start-ups formed: 9

Specific Accountabilities

The incumbent’s key accountabilities are:

  1. Working closely with C4 partners to assess IT&CE technology disclosures for commercial and application relevance
  2. Working independently to conduct prior art searches and assessment of technologies deemed to be commercially interesting
  3. Providing advice on likely patentability of IT&CE inventions to appropriate C4 partners and their researchers.
  4.  Providing advice to C4 partner researchers on the drafting of appropriate patent applications for filing
  5. Interacting with various patent offices or C4 partner designated patent agents to assist in the prosecution of patent applications to issuance.
  6. On a request basis, provide C4 partners with advice concerning potential patent infringement situations and infringement abatement strategies.
  7. On a request basis, provide C4 partners with assistance in negotiating intellectual property protection terms with industry sponsors of contract research
  8.  Regular 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.
  9. Participating in meetings\initiatives as requested.
  10. Taking an active role in promoting and enhancing C4 activities.
  11. Promoting effective interaction  between  the technology transfer offices  of C4 partners and their information technology and computer engineering research sectors.

Working Conditions