Senior Licensing Officer and Licensing Officer, Engineering – The Ohio State University
Updated on by Kelsey Kerstetter
The Ohio State University is committed to furthering their research, innovation, and commercialization efforts, and they need a strong, diverse, and motivated licensing team to reach these goals.
Ohio State has a breadth and depth that few universities possess. They strive to make the right connections, by forming mutually-beneficial relationships that positively impact society by advancing innovation, developing talent and driving economic success.
They work closely with inventors, companies, entrepreneurs, investors and other organizations by connecting the right people and resources to fill gaps and solve complex problems. Learn more at http://oied.osu.edu.
Offices within the Corporate Engagement Office include: Technology Commercialization, Corporate Business Development, New Ventures, & Economic Development.
Invention Disclosures: 306
Patents Issued: 247
Ohio State is one of only a few universities in the U.S. that, in a single location, houses 15 different colleges, including seven health sciences colleges and a college of agriculture.
At Ohio State, you will have all of the tools that are needed—the creative minds, the expertise, the experience and the world-class facilities—to discover innovative solutions to complex problems.
Ohio State research by the numbers (FY 2021):
- $1.236 billion: Total research and development (R&D) expenditures
- $581 million: Federal R&D expenditures
Read more about research at Ohio State:https://erik.osu.edu/facts-figures.
The Senior Licensing Officer – Engineering (“SLO”) is responsible for identifying technologies with commercial applications, evaluating the commercial potential of technologies, identifying potential licensees, preparing non-confidential technical information for marketing purposes, developing and implementing specific marketing strategies for each technology, and drafting and negotiating mid- to large-sized license agreements and other types of agreements including material transfer, collaboration and nondisclosure agreements. They are responsible for performing their own negotiations related to the Intellectual Property (IP), as well as demonstrating valuation and IP understanding.
The SLO may also be responsible for mentoring and supporting licensing analysts, licensing officers and student interns. The SLO will be a visionary and inspiring team member who is committed to fostering an inclusive, innovative, and high performing culture with a varied group of people representing diverse ideas, perspectives, and backgrounds.
30%: Actively working with the inventors and other staff at the university to develop plans for commercialization of the technology, including investor presentations, market analysis, development plans, business plans and intellectual property assessment. Engaging with the inventors and their corresponding departments/colleges to increase the quantity of quality invention disclosures.
20%: Managing a large, broad portfolio of technologies (>100) and independently evaluating the commercial potential by identifying new uses, markets, market size, competing technologies through the use of personal knowledge of emerging technologies, information from experts and on-line databases. Ensuring compliance of licensee with the terms and conditions of the agreement. Monitoring external contractual obligations, milestones, and deliverables within third party contracts.
20%: Actively marketing the technology portfolio. Investigating new technologies/products to determine if there is a market need and determines if the market can support the technology. If a market need exists, evaluates the size of the market and the value of the technology.
20%: Serving as the lead negotiator and successfully negotiating terms for licenses and options, including when appropriate, equity terms and conditions. Being responsible for negotiations related to the Intellectual Property (IP), as well as demonstration of valuation and IP understanding.
10%: Managing on-going patent prosecution by outside patent counsel to assure that the patent strategy is followed, expenses are controlled, and patent, copyright, trademark, and other Intellectual property rights are properly protected. Facilitating the patent preparation by working with patent attorneys (in-house and outside counsel) and the inventors to maximize the possible claims of the Invention.