Licensing Manager, Research and Innovation Services: University of Glasgow

Job Title

Licensing Manager

Department/ Division

Research & Innovation Services

Faculty/Division of AIMS

Professional Services

Reporting To

Head of IP & Commercialisation

Job Purpose

To manage, source, develop  and enforce the University’s portfolio of option, license and assignment agreements governing the transfer of University Intellectual Property (IP) – patented and non-patented - to third parties in line with the University’s Strategic Plans and policies

Main Duties and Responsibilities

• Responsible for leading the completion and enforcement of the university’s portfolio of option, license and assignment agreements governing the transfer of University Intellectual Property (IP) – patented and non-patented - to third parties.

• Management and administration of all pre and post agreement documentation including assignment, IP management and revenue-sharing with third parties for relevant University Intellectual property - patented and non-patented. Manage annual communication with licensees and assignees to ensure obligations are met

• Management of pre and post agreement communication with licensees and co-owner and/ or revenue-sharing third parties to ensure timely completion of tasks and reporting;

• Monitor progress against the department’s strategic plans , identifying shortfalls in performance, evaluating alternatives, devising solutions and initiating corrective action when required.

• Lead the negotiation and completion of revenue-sharing agreements with third party co-owners/beneficiaries of University IP  opportunities. Ensure timely reporting to / from third parties in compliance with revenue-share deals and ensure timely sharing of net revenues

• Lead or support, as agreed, the licensing deal negotiation team in the negotiation of licensing terms (e.g. upfront fees, milestone payments, royalties, equity, etc)  with licensees to ensure the returns and impact are maximised for the University.  Applying specialist expertise, to generate and share benchmarking data on comparable deals for any given licensing opportunities including the application of financial modelling techniques such as NPV to inform the negotiation team

• Apply specialist expertise and extensive knowledge to ensure commercial licensing transactions are performed in professional manner and conform to all pertinent University policies, regulations, and laws associated with the management of intellectual property

• Build a strong internal and external network with relevant communities to promote the work of the Innovation & Engagement section, ,  consulting with and managing expectations; providing reports to College committees, and engaging and managing external stakeholders

• Responsible for the management and maintenance of all University IP records – patent and non-patent, options, licenses and assignment agreements on internal databases

• To explore and manage new approaches to licensing University IP by keeping up to date on international best practices for licensing of IP from academic institutions.

• To perform other activities as may be requested by the Head of IP & Commercialisation and the Director of Innovation & Engagement

Dimensions

• The Licensing Manager role is based in the Innovation & Engagement (I&E) section in the Research & Innovation Services Directorate (RIS). RIS is a Directorate within the central Professional Services Group. I&E is responsible for implementation of the University’s innovation strategy and provides a service to all Colleges in this regard

• The I&E section comprises 3 teams namely IP & Commercialisation (IP&C); Industry Engagement and Consultancy). The Licensing Manager is a new post in I&E and forms a key member of the IP&C team. The IP&C team currently comprises a Head of IP & Commercialisation, 4 x IP & Innovation Managers  and an IP Administrator .

• The Licensing Manager will play an important role in leading, defining, shaping and negotiating the terms of all patent and non-patent licensing transactions working alongside IP & Innovation Managers, Contract Managers and external lawyers. These transactions can be highly complex with potential future revenue values in the £m’s  with significant impact potential for the University.. The LM will also be responsible for the management of the licensing deal portfolio administration and ensuring all data records maintained. They will also be expected to produce deal approval papers, reports and presentations as required within the university.

Knowledge, Skills and Experience

Knowledge/Qualifications

Essential

A1 Ability to demonstrate the competencies required to undertake the duties associated with this level of post having acquired the necessary professional knowledge and management skills in a similar or number of different specialist roles or Scottish Credit and Qualification Framework level 9,10, or 11 with a relevant degree or post-graduate qualification

A2 Authoritative knowledge and experience in negotiating complex IP licence agreements with 3rd parties in either a technology transfer role or corporate environment

A3 A thorough and detailed understanding of the legal framework surrounding IP licence agreements and associated terms

A4 Detailed knowledge of financial modelling tools relevant to licensing transactions

A5 Authoritative knowledge, understanding and experience of approaches to intellectual property protection, processes / costs of intellectual property protection and the management of intellectual property

Desirable

A8 Understanding of patent management, prosecution, technology readiness levels and technology development roadmaps.

Skills

Essential

C1 Strong verbal and written communication and presentation skills are essential. Ability to communicate with senior faculty, researchers, university administration, business professionals, investors, corporate or public sector representatives across any discipline.

C2 Capable of managing, influencing, negotiating and shaping the terms of licensing opportunities

C3 Consistent, professional and commercial approach to licensing IP arising from all disciplines, including benchmarking of deals via appropriate databases in line with international best practices. 

C4 High level of numeracy; Ability to use financial modelling tools and techniques

C5 Ability to understand legal terms and structure of license agreements

C6 Self-starter with the ability to work as part of a team; Ability to operate effectively as part of a team – is cordial, tolerant and willing to help others; is co-operative and patient; shares work and information; establishes rapport, can influence and develop effective networks.

C7 Extensive I.T. skills: Knowledge of MS Office suite. The ability to use customized databases, such as SOPHIA, patent databases and continuously upgrade IT competence is a pre-requisite.

C8Flexibility: Be enthusiastic, operate flexibly in a busy environment and willing to work outside normal office hours if required. Display a ‘can-do’ attitude; demonstrate enthusiasm and passion for the role.

C9 Customer Focus: Possess excellent customer service skills - (both internally and externally) - and be able to communicate with a high level of initiative, tact, accuracy, diplomacy and confidentiality.

C10 Strong organisational and administrative skills with a keen eye for detail, excellent task management skills together with the ability to work on multiple licence deals simultaneously; the ability to prioritise and meet deadlines; capable of working on own initiative and under time constraints; ability to develop creative solutions to multi-faceted problems

C11 Ability to build personal credibility and trust

Experience

Essential

E1 Significant relevant work experience in a Technology Transfer office or equivalent role in the private sector.

E2 Extensive experience of shaping the terms of deals and negotiating with  licensees  including as part of a team

E3 Demonstrable experience of managing and understanding IP licensing transaction agreements

E4 Demonstrable experience of managing intellectual property including filing and prosecuting patent applications

E5 Extensive experience of managing licensing databases and producing reports with insightful and detailed analysis which supports RIS and wider University objectives

E6 Engagement in the brokering of deals with potential licensees

Desirable

E7 Previously worked in relevant Industry

E8 Multi-sector transaction experience

Job Features

Planning and Organising

• Manage multiple complex projects in parallel to deliver agreed actions/tasks within agreed timescales
• Prioritise own workload to meet project reporting requirements within agreed timescales
• Respond to unplanned demands in a timely and flexible way
• Agree growth targets for deal flow and value of licensing transaction portfolio
• Monitor and report progress against planned growth targets

Decision-Making

• Use professional judgement to agree   commercial/financial/contractual terms with third party  licensee’s
• Prepare papers recommending acceptance (or otherwise) of license deal terms
• Develop and make recommendations on continuing to invest resource or to abandon a licensing opportunity
• Recommend data management tools and approaches

Internal/External Relationships

• Co-working with colleagues in IP&C, I&, RIS, Professional Services, College innovation teams as well as external suppliers such as lawyers and patent agents

• Represent the University (including presenting) at technology transfer events e.g. PRAXIS
• Develop/maintain relationships with Licensees and licensing deal brokers

Problem Solving

• Establish best case / worst case deal terms for licensing opportunities taking into consideration opportunity maturity, deal structure benchmarks, market value, competitive environment, licensee investment and probability of success
• Negotiate commercial license deals with third parties and use professional judgement to reach acceptable compromises on return and impact for the University
• Resolve any pre-deal issues related to third party agreements, grant funder T&C’s or co-owner rights and any University current or future research use or publication rights that require to be preserved
• Resolving post-deal issues with licensees
• Managing academic innovator expectations from license deal transactions

Organisation Chart