Department: |
Office of Research – Intellectual Property Management Group (IPMG) |
September 2006 | |
Grade: | 13/14 | Reports to: | Director of IPMG |
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.
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.
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
The incumbent’s key accountabilities are: