Open Positions

Love where you work at the Office of Technology & Industry Alliances (TIA). We are actively recruiting for the positions below.

(Sr.) Licensing Officer

POSITION TITLE: INTELLECTUAL PROPERTY OFFICER 3

PERCENTAGE OF TIME: 100

JOB OPEN DATE: 1/30/23

APPLICATION REVIEW BEGINS: 2/14/23

WORKING DAYS/HOURS: M-F, 8AM – 5PM

WORK FORMAT: ONSITE, FULLY REMOTE, OR HYBRID ARRANGEMENTS AVAILABLE

WORK LOCATION: 342 LAGOON RD

SALARY RANGE*: $102,000 TO $150,000

For full consideration, please include a resume and a cover letter as part of your application.

Apply Now

About TIA

The primary mission of UCSB’s Office of Technology & Industry Alliances (TIA) is to build the foundation for long-term, productive and mutually beneficial relationships between UCSB and its industry collaborators. TIA was established in August 2005 with two main responsibilities: to manage the intellectual property developed through UCSB research (including out-licensing) and to manage the many agreements with industry partners that support research collaborations (including research agreements, material transfer agreements, non- disclosure agreements and memorandums of understanding). This intellectual property administration includes implementation of the University of California intellectual property policies, the evaluation and marketing of inventions and copyrightable works, the prosecution of patents, and the negotiation and administration of a variety of legal agreements related to licensing intellectual property. TIA also performs outreach to both the campus community and industry sector concerning technology transfer and research activities at UCSB. This includes working closely with UCSB startups who have or may license UCSB inventions.

Benefits of Belonging

Working at UC means being part of this vibrant institution that shines a light on what is possible. People make UC great, and UC recognizes your contributions by making this a great place to work. Excellent retirement and health are just one of the rewards. Learn more about the benefits of working at UC.

Job Duties

This position, under the general direction of the Director of the Office of Technology & Industry Alliances (TIA) within the Office of Research at the University of California Santa Barbara (UCSB), with day-to-day supervision and training provided by the Associate Director, Licensing, supports the office’s licensing activities by, among other things, managing all aspects of patent prosecution for UCSB’s 650+ invention portfolio, monitoring licensing agreements (including licensee compliance) and performing complex data analysis. In addition, this position manages approximately 1/3 of the UCSB technology portfolio which includes, among other things, evaluation and overseeing legal protection of assigned technologies (including total legal fee expenditures) and the negotiation, drafting and oversight of licensing agreement(s) related to such technologies and the revenues received by the university related to such agreements. The incumbent is expected to have a strong scientific background, preferably in a physical sciences and/or engineering field(s), full understanding of relevant technology transfer practices, industry and university practices and patent prosecution principles as well as be able to interpret and apply applicable UCSB and University of California system-wide technology transfer and licensing policies in order to resolve a wide range of issues while demonstrating good judgment in selecting the methods and techniques for solutions through performing with moderate to complex analysis and tracking multiple deadlines and issues.

Required Qualifications

Bachelor’s Degree in related area or equivalent experience and/or training.
2 years of experience in tech transfer, with familiarity with all aspects of the field.

Preferred Qualifications

Master’s Degree: preferably JD, MBA and/or Master’s degree in a scientific field.
2-4 years of licensing experience at an academic, governmental or non-profit research entity.

Special Conditions of Employment

Form 700 Statement of Economic Interests Filer.
Satisfactory conviction history background check.
UCSB is a Tobacco-Free environment.

Detailed Job Functions – Percentage of Time

Campus Portfolio: IP strategy and management: 20%

Exercising a high degree of independence and autonomy, manage the patent prosecution for UCSB patent portfolio. Management includes, but is not limited to, overseeing invention intake process to assure it occurs efficiently and accurately and to assure any legal issues (including, for example, third party obligations) are accurately identified to licensing officer; assuring applicable federal and state compliance regulations are followed, oversee maintenance of internal databases to assure accuracy thereof (with assistance of Licensing Analyst). Serve as primary contact for, and issue instruction to, outside legal counsel. Oversee and authorize over $2.5M in expenditures to outside legal firms prosecuting patents on behalf of UCSB. Advise Associate Director, Licensing and/or Director on patentability of new inventions disclosed to the office. Develop and implement patent strategies, in collaboration with outside legal counsel and in consultation with licensing officers, as appropriate, that strive to maximize the breadth of patent coverage while minimizing expenditures. When complex issues arise during patent prosecution, develop and implement potential strategies to overcome or address the issues, in collaboration with outside legal counsel. Review patent portfolio regularly to recommend actions to the director and licensing officers to promote prudent fiscal management, including, but not limited to, reviewing issued patents for continued viability and relevance, and identifying patent prosecutions encountering significant challenges and recommend whether to continue the prosecution. Execute powers of attorney and other patent prosecution documents on behalf of UCSB (with assistance of Licensing Analyst). Assure Patent Tracking System (PTS) database invention and patent records are maintained accurately and complete, and reporting requirements to the federal government and other research sponsors are performed as required. Monitor Bayh-Dole filing deadlines and assure extensions are obtained, when needed. Monitor and analyze changes in external regulations, legislation and UC policies form impact on patent prosecution, updating and modifying attorney instructions, patent prosecution strategies, and internal business processes as necessary (with assistance of Licensing Analyst).

Campus Portfolio: Agreement Intake: 5%

Exercising a high degree of independence and autonomy, upon execution, analyze agreement terms (including licensing, options and letter agreements) to identify key licensing terms. Establish relationships with UCSB licensees. Monitor and manage licensee compliance with key agreement terms, identifying when certain terms (such as milestone or sublicense payments) are triggered, by among other things, reviewing licensee press releases and required progress and royalty reports. When irregularities or questions arise concerning progress or royalty reports, engage the licensee to understand and/or verify the information and develop strategy for, then implement, appropriate corrective action, consulting with the director and/or assigned licensing officer, as appropriate. Recommend royalty audit candidates to the director. With assistance of the Licensing Analyst, assure agreement database remains accurate and up-to-date and advise University of California Office of the President (UCOP) Innovation Alliances and Service (IAS)accounting office on financial terms and monitor to assure appropriate invoicing and rebilling procedures are adopted.

Campus Portfolio: Data Analysis/Report Preparation: 5%

Upon the request of the Director, design novel, complex and customized reports to pull and synthesize multiple data points about the UCSB intellectual property portfolio to monitor a wide array of metrics including, but not limited to, financial metrics, upcoming legal deadlines, and licensing or other trends within the intellectual property portfolio. Prepare appropriate reports for departments, upon request, assuring all confidentiality obligations are properly addressed. Needs to be highly proficient working with IP data information systems and have the ability to learn to use applicable business systems.

Assigned IP: Evaluation, Protection and Strategy: 20%

Using skills as a seasoned, experienced technology transfer professional with an in-depth understanding of the field, perform the following duties with good judgment, with respect to complex inventions and/or working within complex legal and business landscapes: Evaluate commercial potential and formulate licensing strategy for a substantial portfolio of inventions that are relevant to a diverse array of markets. Reviews complex funding agreements to identify all intellectual property obligations (including those to the federal government) owed to research sponsors or center members for assigned technologies, and assures all such obligations are timely and appropriately fulfilled. Evaluate potential licensees and development teams to evolve licensing strategies, considering the market data, interest and longer term public benefit. Determine the patentability of assigned technologies and assure the legal rights of The Regents, particularly patent rights and copyrights, are protected and preserved for inventions and software under the officer’s management. When appropriate, recommend to the Director the need to authorize and review patentability opinions and patent searches by patent attorneys. Market new technologies to potential industrial partners in collaboration with the TIA Marketing Manager. Coordinate with faculty and researchers on commercialization strategy. Requires ability to communicate effectively in writing and orally with a wide range of individuals ranging from university scientists to patent attorneys, to financial, IT and administrative staff to company representatives.

Assigned Technologies: IP Protection: 10%

Oversees the activity of outside patent attorneys prosecuting intellectual property rights on behalf of the University for assigned disclosures, including: Provides recommendations to the Director concerning filing patent applications on assigned disclosures. Upon authorization by the Associate Director, gives initial instructions to patent attorneys and monitor patent prosecution to ensure that adequate and appropriate protection of commercially important aspects of the invention is sought. Reviews invoices from attorneys to verify that work has been done within cost estimates/caps and that charges are reasonable. Recommends payment of reasonable fees and resolve billings that exceed estimates, caps or otherwise reasonable levels. Obtains prior approval of Associate Director for payment of invoices that exceed certain thresholds established by TIA. Monitors and periodically evaluates whether or not to continue prosecution of individual patents and, when appropriate, request authorization to terminate prosecution. When appropriate, performs research and analysis on patentability of inventions and/or surveys the existing prior art.

Assigned IP: Identification of Qualified Licensees: 10%

Markets new technologies and inventions to potential industrial partners in collaboration with the TIA Marketing Manager through direct contact with inventors, independent research, professional networking, and various databases, develops a licensing and marketing strategy for assigned disclosures, including the identification of potential markets for assigned disclosures, the determination of an appropriate licensing strategy and the proactive identification of potential licensees for assigned technologies. Determines licensing interest by initiating contact with companies and/or responding to company inquiries. Prepare or coordinate preparation of appropriate marketing materials for such contacts. Evaluate complex potential licensees and development teams to evolve licensing strategies considering the market data, interest and longer term public benefit. Obtains and evaluates business and marketing plans of potential licensees. Evaluates specific potential licensees for suitability and, if multiple potential licensees request a license, manages multiple requests consistent with UC policy and practices. Select appropriate company or companies with whom to negotiate licenses. Serves as liaison between industry representatives, University inventors and patent attorneys during marketing process.

Assigned IP: Negotiation/Management of Agreements: 20%

For assigned technology portfolio, negotiate complex license, option and other agreements related to the licensing of substantial invention portfolio. Requires excellent communication and interpersonal skills to professionally, tactfully and efficiently handle all aspects of the negotiation of licenses as well as post-execution monitoring and compliance. Develops negotiation strategies, including business, financial and due diligence terms. Gather, analyze, prepare and provide input on exceptions to policy, when appropriate and necessary to fulfill office objectives. Work with UC general counsel during legal review of proposed complex license agreement prior to Director’s execution of license agreement. Assure licensees meet all complex licensing obligations and intervene or initiate corrective action when commitments are not met. Identifies and documents terms of agreements to be actively enforced, and ensures that appropriate administrative and support staff are informed of and understand these terms, and that the agreement is appropriately entered into tracking databases. Resolves problems arising after execution, send notices of default and termination, renegotiate terms as appropriate. Drafts and negotiates amendments to the terms of license and option agreements and submit amendments to the Director for execution. Manages the process of collecting sales/royalty reports and payments from licensees. Identifies and resolves collection issues or unexplained or diminishing royalty streams. Recommends, as appropriate, that the General Counsel take legal action to bring licensees into compliance with the terms of agreements or to abate infringement by non-licensees.

Campus Portfolio: Inventor Outreach: 5%

Provide advice and consultation to University faculty and staff on issues related to invention disclosures, technology commercialization and patent law. Participate in campus and TIA training seminars, workshops and courses, including teaching and public speaking.

Special Projects: 5%

Perform special projects as requested by the Associate Director, Licensing and Director.

Vaccination Program, Including SARS-COV-2 (COVID-19)

As a condition of employment, you will be required to comply with the University of California Policy on Vaccinations Programs – With Interim Amendments. As a condition of Physical Presence at a Location or in a University Program, all Covered Individuals must participate in any applicable Vaccination Program by providing proof that they are Up-to-Date with any required Vaccines or submitting a request for Exception in a Mandate Program or properly declining vaccination in an Opt-Out Program no later than the Compliance Date (Capitalized terms in this paragraph are defined in the policy.). Federal, state, or local public health directives may impose additional requirements. For more information:

* Covered Individuals: A Covered Individual includes anyone designated as Personnel, Students, or Trainees under this Policy who physically access a University Facility or Program in connection with their employment, appointment, or education/training. A person accessing a Healthcare Location as a patient, or an art, athletics, entertainment, or other publicly accessible venue at a Location as a member of the public, is not a Covered Individual.

Equal Opportunity/Affirmative Action Statement

UC Santa Barbara is an Equal Opportunity/Affirmative Action Employer and all qualified applicants will receive consideration for employment without regard to race, color, religion, sex, sexual orientation, gender identity, national origin, disability status, protected veteran status, or any other characteristic protected by law.

Reasonable Accommodations

The University of California endeavors to make https://jobs.ucsb.edu accessible to any and all users. If you would like to contact us regarding the accessibility of our website or need assistance completing the application process, please contact Katherine Abad in Human Resources at 805-893-4664 or email katherine.abad@hr.ucsb.edu. This contact information is for accommodation requests only and cannot be used to inquire about the status of applications. Privacy Notification Statement, Notice of Availability of the UCSB Annual Security Report Disclosures, General Data Protection Regulation (GDPR) Statement for Persons in the European Economic Area, Background Checks, and Notice of Availability of the UCSB Annual Security Report

DEPARTMENT CODE (NAME): RESD (VICE CHANCELLOR OF RESEARCH)

BENEFITS ELIGIBILITY: FULL BENEFITS

UNION CODE: 99 – NON-REPRESENTED (PPSM)

FLSA STATUS: EXEMPT

GRADE TYPE/GRADE: GRADE 26

PAYROLL TITLE: IP OFCR 3

UC JOB CODE: 000338

* SALARY OFFERS ARE DETERMINED BASED ON FINAL CANDIDATE QUALIFICATIONS AND EXPERIENCE; THE BUDGET FOR THE POSITION; AND THE APPLICATION OF FAIR, EQUITABLE, AND CONSISTENT PAY PRACTICES AT THE UNIVERSITY. THE FULL SALARY RANGE FOR THIS POSITION IS $102,000 TO $214,800 /YR. THE BUDGETED SALARY OR HOURLY RANGE THAT THE UNIVERSITY REASONABLY EXPECTS TO PAY FOR THIS POSITION IS $102,000 TO $150,000.

Licensing Analyst

POSITION TITLE: Licensing Analyst

PERCENTAGE OF TIME: 100

JOB OPEN DATE: 3/20/23

APPLICATION REVIEW BEGINS: 4/4/23

WORKING DAYS/HOURS: M-F, 8AM – 5PM

WORK FORMAT: ONSITE, FULLY REMOTE, OR HYBRID ARRANGEMENTS AVAILABLE

WORK LOCATION: 342 LAGOON RD

SALARY RANGE*: $76,000 to $90,000

For full consideration, please include a resume and a cover letter as part of your application.

Apply Now

About TIA

The Office of Technology and Industry Alliances (TIA), within the Office of Research (OR) at the University of California Santa Barbara (UCSB), manages intellectual property developed through UCSB research, executes agreements with industry partners that support research collaboration and relate to campus research activities (including MTAs, DUAs and NDAs), and performs outreach to both the campus community and industry sector concerning technology transfer and research activities at UCSB. Campus intellectual property administration includes implementation of the University of California (UC) intellectual property policies, the evaluation and marketing of inventions and copyrightable works, the prosecution of patents, and the negotiation and administration of a variety of legal agreements related to the patenting and licensing of UCSB intellectual property.

Benefits of Belonging

Brief Summary Of Job Duties

This position, under the general direction of the Director, with day-to-day supervision and training provided by the Associate Director, Licensing, supports the office’s patent, licensing and related compliance activities. The Licensing Analyst is responsible for supporting the management of the UCSB technology portfolio, which consists of over 650 technologies, and related patent prosecution activities. The incumbent is generally responsible for 1) in-take, review and processing of new technology invention disclosures; communications with inventors, joint-owners, and outside counsel at various stages of the invention review process; 2) ensuring all required invention- and patent-related agreements (such as assignment and power of attorney agreements) are generated, executed and docketed (with assistance of the TIA Office Manager); 3) docketing all patent prosecution correspondence and ensuring that the key responsible individuals are informed of due dates and/or actions that need to be taken including but not limited to TIA staff, UCSB inventors, outside patent counsel and licensees; 4) establishing and maintaining data in the UC Patent Tracking System (PTS) and related databases as needed and maintaining all case files on the TIA shared drive; 5) managing all government reporting and compliance under the Bayh-Dole Act related to invention disclosures and patent filings (including but not limited to iEdison reporting) and 6) tracking and running financial reports related to patent prosecution expenses and coordinate as needed with the UC Office of the President regarding licensee invoicing and royalty distributions as needed. The incumbent needs to be highly proficient working with IP data information systems and have the ability to learn to use applicable business systems. In sum, the Licensing Analyst is responsible for independently tracking, docketing, and monitoring of actionable patent prosecution items for the entire UCSB portfolio. Licensing Analyst receives, reviews, and analyzes patent prosecution matters including complex IP prosecution history, cross-checking accuracy of information against internal patent tracking databases, data logs, and correspondence. He/she develops, implements, and improves the TIA docketing workflow and processes, as needed, working with other TIA staff, UCSB outside attorneys and other patent/legal practitioners to establish best practices and ensure compliance with applicable federal government, UC and UCSB policies and best practices.

Required Qualifications

Bachelor’s Degree in science, business, legal studies, or related field and/or equivalent training and/or experience.
4-6 years relevant experience working in an academic technology transfer office performing similar/equivalent duties.

Preferred Qualifications

Master’s Degree in science, business, legal studies, or related field and/or equivalent training and/or experience.

Special Conditions of Employment

Criminal history check (U02): Satisfactory conviction history background check
UCSB is a Tobacco-Free environment

Job Functions/Percentage of Time/Duties

55% Patent Prosecution and Management

Throughout the life of each invention, review and analyze all patent correspondence from outside patent counsel to identify key legal deadlines and necessary legal and other actions to maintain patent protection and viability. Advise Director and appropriate TIA staff member of upcoming deadlines sufficiently in advance for meaningful decision-making and timely actions. Assure patent tracking database (PTS) remains accurate and up-to-date, reflecting the critical information provided in patent correspondence from outside patent counsel, and patent prosecution correspondence documents are properly archived. Prepare and/or review US and foreign prosecution documents, including Power of Attorneys, Assignments, Declarations and other documents for Director’s signature. Research and acquire necessary prior art documents, upon request, for Information Disclosure Statements and other patent filings. Using patent PTS and various publicly available databases, design and prepare both regular and customized, ad-hoc reports for the Director, other TIA staff and UCSB departments, as appropriate, to pull metrics concerning: (a) UCSB’s patent portfolio and various subsets of the portfolio; and (b) ongoing patent prosecution costs. Research and answer questions from inventors, TIA licensing officers, faculty and licensees concerning patent application information and prosecution instructions. Recommend, design and implement various tracking tools, databases and procedures to monitor upcoming statutory bar dates, filing dates, and other significant prosecution deadlines proactively.

25% Federal Compliance

Review PTS and other available internal resources to confirm funding sources used to develop invention and, in the case federal funding was used, ensure full compliance with reporting requirements under the Bayh-Dole Act. Throughout the life of each invention and patent prosecution, ensure federal compliance requirements and reporting is complete, via iEDISON or other required means of communication, including, but not limited to, the time election of title, reporting of filed patent applications, confirmatory licenses, utilization reports and patent closure. Assure appropriate government support clause appears in all patent filings involving federal funding. Review weekly outstanding notification messages from iEdison and take appropriate corrective actions to resolve them. Advise Director on any corrections to required federal reports that require outside counsel’s assistance. Recommend, design and implement various procedures and tracking systems to ensure reporting deadlines are timely met in a manner consistent with the Bayh-Dole Act.

15% Agreement Management

Review executed license agreements and prepare financial checklists summarizing key financial terms. Coordinate with UCOP Accounting to assure UCOP Accounting properly reflects key licensing terms in PTS. Monitor licensee compliance with license terms, including financial obligations, diligence and milestone obligations, and reporting obligations. In the case of non-compliance, advise Director and relevant licensing officer, identify and, upon approval, implement corrective actions. Assure federal compliance requirements and reporting is complete with respect to all license agreements and commercialization efforts. Prepare and produce regular and customized, ad-hoc reports, upon request, concerning licensee compliance with diligence, milestone and financial obligations. Recommend, design and implement various procedures and tracking systems to monitor licensee compliance proactively.

5% Special Projects

Perform special projects from time-to-time as assigned by the Director of TIA.

Vaccination Program, Including SARS-COV-2 (COVID-19)

For more information:

Equal Opportunity/Affirmative Action Statement

Reasonable Accommodations

Privacy Notification Statement, Notice of Availability of the UCSB Annual Security Report Disclosures, General Data Protection Regulation (GDPR) Statement for Persons in the European Economic Area, Background Checks, and Notice of Availability of the UCSB Annual Security Report

Payroll Title: IP OFCR 2

Job Code: 6237

Department Code (Name): RESD

Union Code (Name): 99

Employee Class (Appointment Type): 2 – Staff: Career

FLSA Status: Exempt

Classified Indicator Description (Personnel Program): PSS

Salary Grade: 23

* Salary offers are determined based on final candidate qualifications and experience, the budget for the position, and application of fair, equitable and consistent pay practices at the University. The full salary range for this position is $75,800 to $149,600. The budgeted salary range that the University reasonably expects to pay for this position is $76,000 to $90,000.

Benefits Eligibility: Full Benefits