Technology Licensing Officer- AI, Software, and Digital Technologies

Job description

When you join the growing BILH team, you're not just taking a job, you’re making a difference in people’s lives. The Technology Licensing Officer will report to the Director of the Technology Ventures Office (TVO). The Technology Licensing Officer will evaluate inventions made by researchers, assessing their commercial potential, identifying potential licensees and drafting and negotiating exclusive and non-exclusive license agreements. The Technology Licensing Officer is responsible for directing outside patent counsel on the drafting and prosecution of patents. The Technology Licensing Officer will collaborate with TVO’s administrative staff to maintain IP files and process financial transactions. This position is responsible for drafting and negotiating industrially sponsored research agreements as well as material transfer, data transfer, software, collaboration, inter-institutional, and non-disclosure agreements. The Technology Licensing Officer will have interactions with BILH research investigators at Beth Israel Deaconess Medical Center, Joslin Diabetes Center and Lahey Hospital and Medical Center, pharmaceutical and biotechnology company representatives, venture capitalists and external Technology Transfer Offices. Job Description: Primary Responsibilities: Negotiates drafts and maintains intellectual property agreements including but not limited to licensing agreements, industrially sponsored research agreements, material and data transfer agreements, and patent management agreements. Must have the ability to edit language unique to each intellectual property agreement type (i.e., SRA, ELA, NELA, MTA, DTA, RCA, IIA, CDA, …) while remaining consistent with hospital mission and policies (essential) Evaluates new invention disclosures, develops a strategy to protect these inventions and directs outside patent counsel in the drafting and prosecution of patents. (essential) Develops commercialization strategies for inventions, including identifying biotech, pharmaceutical and medical device companies capable of licensing and commercializing these technologies. (essential) Educates and informs researchers on the preparation of invention disclosures and on matters related to the protection and licensing of intellectual property, consistent with BIDMC internal policies on research and technology transfer. (essential) Timely enters agreements into the existing TVO IP database and assist with the intake process of new agreement requests from the centralized web-based grant portal (essential) Assists the TVO Finance Analyst with the reconciliation of outside patent counsel invoices ensuring all charges are accurately allocated to their unique TVO IP docket number. (essential) Additional Responsibilities – AI, Software, and Digital Technologies Evaluates invention disclosures involving AI, machine learning, software, algorithms, digital health tools and data-driven technologies, considering patent and non-patent strategies. Develops intellectual property and commercialization strategies tailored to AI- and software-enabled innovations, including appropriate licensing models. Drafts and negotiates software, data use, cloud services, and AI-related agreements. Advises researchers on disclosure, data usage, model training and commercialization considerations for digital technologies. Identifies industry partners, startups and investors in digital health, data analytics and life sciences technology sectors. Collaborates with outside counsel on patent, freedom-to-operate and regulatory considerations for digital technologies. Monitors emerging best practices in AI and digital technology transfer. Required Qualifications: Master’s degree in Biological Science required; Doctoral degree in Biological Science or JD preferred. 5 - 8 years technology licensing experience in academic, medical center, and/or industrial environments required. Related experience in biological laboratory research preferred. Knowledge of patent terminology and filing procedures including both U.S. and foreign matters. Must be highly accurate, strong attention to detail and the ability to maintain confidentiality of IP affairs. Strong writing and verbal skills and experience with Word, Excel, Outlook as well as solid internet research capabilities (i.e., USPTO, EPO, WIPO, Google Patents). Willingness to work as a team player; able to thrive in a fast-paced, demanding environment. Competencies: Decision Making: Ability to make decisions that are guided by precedents, policies and objectives. Regularly makes decisions and recommendations on issues affecting a department or functional area. Problem Solving: Ability to address problems that are highly varied, complex and often non-recurring, requiring staff input, innovative, creative, and Lean diagnostic techniques to resolve issues. Independence of Action: Ability to set goals and determines how to accomplish defined results with some guidelines. Manager/Director provides broad guidance and overall direction. Written Communications: Ability to summarize and communicate in English moderately complex information in varied written formats to internal and external customers. Oral Communications: Ability to comprehend and communicate complex verbal information in English to medical center staff, patients, families and external customers. Knowledge: Ability to demonstrate full working knowledge of standard concepts, practices, procedures and policies with the ability to use them in varied situations. Teamwork: Ability to work collaboratively in small teams to improve the operations of immediate work group by offering ideas, identifying issues, and respecting team members. Customer Service: Ability to provide a high level of customer service to patients, visitors, staff and external customers in a professional, service-oriented, respectful manner using skills in active listening and problem solving. Ability to remain calm in stressful situations. Social/Environmental Requirements: Work requires close attention to task for work to be accurately completed. Intermittent breaks during the workday do not compromise the work. Work is varied every day, and the employee needs to be adaptable to respond to these changes and use independent judgment and manage priorities. No substantial exposure to adverse environmental conditions. Health Care Status: NHCW: No patient contact. - Health Care Worker Status may vary by department. Sensory Requirements: Close work (paperwork, visual examination), Color vision/perception, Visual clarity Physical Requirements: Sedentary work: Exerting up to 10 pounds of force occasionally in carrying, lifting, pushing, pulling objects. Sitting most of the time, with walking and standing required only occasionally. This job requires constant sitting, keyboard use. There may be occasional fine manipulation using one hand. Pay Range: $124,800.00 USD - $176,800.00 USD The pay range listed for this position is the annual base salary range the organization reasonably and in good faith expects to pay for this position at this time. Actual compensation is determined based on several factors, that may include seniority, education, training, relevant experience, relevant certifications, geography of work location, job responsibilities, or other applicable factors permissible by law. As a health care organization, we have a responsibility to do everything in our power to care for and protect our patients, our colleagues and our communities. Beth Israel Lahey Health requires that all staff be vaccinated against influenza (flu) as a condition of employment. More than 35,000 people working together. Nurses, doctors, technicians, therapists, researchers, teachers and more, making a difference in patients' lives. Your skill and compassion can make us even stronger. Equal Opportunity Employer/Veterans/Disabled