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Technology Transfer Officer, Classical Engineering & Sciences Technology

Department: Office of Research - Waterloo Commercialization Office (WatCo) Effective Date: January 2011
Grade: USG 14 Reports to: Associate vice President - Commercialization

General Accountability

This position is located at the University of Waterloo and the successful candidate shall be a member of the Office of Research within the Waterloo Commercialization Office (WatCo) functional group that reports to the Associate Vice President – Commercialization.  The Technology Transfer Officer is expected to support the broader goals of the Office of Research and more specifically the mission of the Waterloo Commercialization Office in providing intellectual property management services consistent with the provisions UW Policy #73-Intellectual Property. The Technology Transfer Office 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.

Specifically in this position, the Technology Transfer Officer shall be responsible for interacting with university researchers to provide assistance and guidance in identifying, protecting, and commercializing IP discoveries in a variety of technical disciplines related primarily to the classical engineering disciplines of civil, mechanical (mechatronics), and chemical engineering and the general disciplines of science (including nanotechnology). 

The University is also a member of the C4 Network, a consortium comprising the University of Waterloo, the University of Guelph, the University of Western Ontario, McMaster University, Wilfrid Laurier University, and the University of Windsor, that is funded through the Ontario provincial government. The C4’s 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.    Approximately 10-15% of the position’s time is dedicated  to supporting the commercialization of intellectual property from other C4 Institutions and the incumbent shall be required to become knowledgeable of the IP policies and procedures at the C4 Universities and to perform his\her duties in accordance with such practices.

Nature and Scope

The incumbent is responsible for interacting with university researchers to provide assistance and guidance in identifying, protecting, and commercializing IP discoveries in a variety of technical disciplines related primarily to the classical engineering disciplines of civil, mechanical (mechatronics), and chemical engineering and the general disciplines of science (including nanotechnology).

The Officer is responsible for reviewing new technology disclosures and providing technical and business recommendations concerning whether to accept or decline a new technology opportunity for WatCo commercialization investment support. For those technologies deemed to be commercially interesting, the Officer assumes responsibility for managing the IP protection process, including undertaking and/or assessing prior art searches; managing the patent filing and prosecution process via interaction with external patent agents and proactively maintaining and responding to patent activities generated from the Inteum patent database.  The Officer shall also be responsible for initiating, writing, and securing technology prototype development funding available from various government agencies to advance the commercial readiness of the technologies within the Officer’s portfolio.  Securing such funding will require the Officer to understand the market opportunity in sufficient detail to articulate a compelling written business case by which such proposals are evaluated.  The Officer shall also be required to proactively market technologies within the assigned portfolio by contacting potential industry licensees (or investors in the case of startup company opportunities), creating web based marketing materials, drafting press releases, and attending appropriate trade show and industry focussed networking events.   The Officer may also be periodically required to provide assistance to other functional groups within the Office of Research in negotiating suitable intellectual property terms for inclusion in research agreements with industry or other partners.  All of the aforesaid activities shall require the incumbent to become familiar with basic legal concepts in order to negotiate a wide range of legal agreements, including but not limited to, non-disclosure agreements, material transfer agreements, option or license agreements, IP assignment agreements, inter-institutional agreements, and memorandum of understanding agreements. The Officer may be required to interact with external companylicensees and start-up companies to monitor performance and to trouble-shoot technical and administrative issues associated with agreements pertaining to IP commercialization.

To successfully perform the aforesaid roles, the Officer will have: 1) the requisite technical and scientific knowledge as well as interpersonal skills to effectively communicate within a research-oriented academic environment; 2) demonstrated knowledge and experience in managing  intellectual property (eg. patent administration); 3) sufficient  business experience to understand and communicate the commercial relevance of new technology opportunities to potential external commercial partners and strategic partners (i.e C4, Accelerator Centre, etc), and 4) demonstrated experience negotiating and managing various forms of commercialization related legal agreements.  Most importantly the Officer will have the requisite interpersonal and communications skills to facilitate business discussions that bridge the gap between academically oriented nature of a university researcher environment with bottom-line driven entrepreneurial goals of business sector partners and venture investors.

The Technology Transfer Officer ideally should possess some degree of legal, contract and patent administration knowledgein 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 Office will from time to timebe 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 Officer’s role is undertaken in a challenging environment populated by an expanding number of active external participants including the C4 Institutions, the Accelerator Centre, industry, government, and public and financial sectors. Additional challenges include the requirement to be able to sort out the complexity of conflicting IPownership rights arising from inter-institutional collaborative research partnerships and to specify a patenting strategy consistent with the rules and regulations of the various country patent jurisdictions. The position often involves reviewing and assessing the impact of a variety of legal documents and as such the incumbent shall be expected to understand basic legal concepts and be comfortable interacting with legal counsel. The role also requires the Officer to be creative in negotiating commercial terms that balance the needs of the commercial receptor (eg. a licensee) and that generate an equitable return for the university researcher-inventors and the university. The Officer shall also 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.

To be successful in this role, the  Officer shall be self motivated and be able 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.

Some specific job related examples of challenges include: (a) attracting technology disclosures to WatCo 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 WatCo 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

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:
  1. Number of technology disclosures processed
  2. Royalty revenue generation
  3. Number of non-disclosure agreements
  4. Number of license agreements
  5. Number of patent applications filed
  6. Funding applications submitted to government agencies for prototype development projects
  7. Number of prototype development projects secured
  8. Number of spin-off companies


The above statistical data varies from year to year and is almost entirely outside of the control of WatCo and the Technology Transfer Officer. Reliance on any one specific numerical statistics to evaluate performance is not usually helpful since overall performanceachieved 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  WatCo in any given year. Performance evaluation by the Director is based on the overall performance of the Technology Transfer Officerin undertaking assigned tasks includinganassessment of the Technology Transfer Officer’s impact on the positive or negative variancein the above statistical metrics as well as providing an acceptable standard of service to the various WatCo stakeholders.

Specific Accountabilities

The Officer’s key accountabilities are:

  1. Working closely with University and C4 partner researchers to assess 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 E&CE inventions
  4.  Providing advice on the drafting of appropriate patent applications for filing
  5. Interacting with various University or C4 partner patent agents to assist in the prosecution of patent applications to issuance.
  6. On a request basis, provide support to other functional groups within the University’s Office of Research or to C4 partners to assist in negotiating intellectual property protection terms with industry sponsors of contract research
  7. 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.
  8. Proactively marketing technologies to potential licensees or investors
  9. Negotiating and managing appropriate intellectual property commercial agreements (eg. non-disclosure agreements, material transfer agreements, option agreements, license agreements, letters-of-intent, memorandum of understanding, etc.)
  10. Participating in meetings\initiatives as requested.
  11. Taking an active role in promoting and enhancing C4 activities.
  12. Maintaining effective and timely communication with University researchers, C4 partners, and external parties to smoothly advance the commercialization of technologies under the Officer’s management.
  13. Successful commercialization results through the licensing of IP or through the creation of spin-off companies
  14. Participating in meetings\initiatives as requested by the Director

Working Conditions