Job Description

Overview

Term: 2 years

There is an ever increasing focus and emphasis from both federal and provincial governments to enhance the overall capacity of Canadian universities to transfer the significant investment in the creation of research outputs to the broader societal and economic benefit of Canada. Thus it is imperative that Waterloo expand and bolster it's capacity to drive intellectual property (IP) protection and commercialization metrics in this new environment. Further, building such capacity supports Waterloo's signature commitment to "Be a global powerhouse for commercializing research, developing new enterprises and supporting business growth".

The Waterloo Commercialization Office (WatCo) provides IP management and commercialization (ie. licensing\startup formation) services, primarily to the research community on campus. Traditionally, WatCo has provided these services across all Faculties, with a focus on the Engineering faculty that represents the largest source of project deal flow. In order to deepen WatCo's source of impactful projects and to expand it's capacity to meet the aforesaid CMA expectations, there is a need to develop a more targeted capacity to support the Science faculty - which represents another high potential source of IP and commercialization opportunities.

The Science faculty presently has numerous research partnerships and internal commercialization initiatives that serve as a solid foundation from which IP and commercialization success can be derived. Examples of such initiatives include the Hong Kong based , the newly established , participative support in the , and sponsorship of the student focused infrastructure and entrepreneurship programming. These and other Science initiatives represent fertile grounds from which further IP generation and commercialization activity can be supported.

In order to respond to the need to enhance Waterloo's technology transfer capacity, there is a current requirement to create a WatCo role to assist the Science faculty, and by extension the institution, to drive increased IP opportunities and commercialization results from the various aforesaid Science strategic initiatives

Responsibilities

Intellectual Property Assessment

• Reviews Technology Disclosure documents submitted from campus innovators, with a particular focus on technology arising from the Science faculty. Convene interviews with relevant IP creators to get further details\clarification including information in the Technology Disclosure document.
• Conduct prior art patent and literature search to form an opinion on IP patentability and freedom-to-operate.
• Completes assessments of technology in various potential market application spaces. This includes searching publicly available sources and securing direct feedback about the opportunity from companies in the identified markets Completes and submits a recommendation and justification report to be presented to Director, Commercialization.
• Independently manages all communications with the IP creators regarding the assessment and decisions made.

Intellectual Property Management

• Develop IP strategy for accepted projects. Identify appropriate patent agent (if needed) and retain to handle the formalities of drafting, filing, and prosecuting the patent.
• Management of the relationship with the patent agent including ensuring that the IP creator is adequately engaged with the patent drafting process in a cost effective manner.
• Review and provide first-level approval of all IP management invoices prior to submitting to the Director for final payment approval
• Ensure all relevant information for their IP portfolio is entered into the Inteum (IP database software) and proactively monitor the overall status of their IP portfolio to ensure timely decisions related to costs and actions.

Technology De-risking Support

• Work with IP creator team to prepare and submit funding proposals for prototype development projects that serve to advance the commercial readiness of the IP opportunity. Meeting with private companies to get market feedback and securing support letters are typically required as part of such business case and proposal preparation activities
• Marketing of prototype or demonstration project results to prospective private sector company licensing targets and/or start-up company investors

Commercialization Support

• Initiate proactive marketing strategies to potential industry licensees (or investors in the case of startup company opportunities)
• Develops commercialization plans and initiate discussions and related legal documents in support of arriving at fully negotiated agreements. Management of the negotiation process and completion of related documents and shall seek out support from Director and the Office of Research legal counsel as required
• Act as a liaison between WatCo and the Velocity Science program to facilitate engagement of students\researchers from the Science Faculty and to participate in any related initiatives that generally support the commercial advancement of technologies developed within said program

Other

• Assistance with a range of activities that may result in special projects being assigned, such as IP -awareness workshops to campus audiences or presentations on UW commercialization activities to foreign delegations or to provide input\support to other Office of Research groups or broader UW functional groups.
• Act as a resource to Science Faculty to provide research proposal support with respect to programs that have specific requirements for the specification of commercialization plans (eg. Ontario Research Fund related programs, NSERC Idea to Innovation programs, Mitacs entrepreneurial programs, etc)
• Act as a general IP\Commercialization advisor to Science Faculty researchers and students, including promoting access to and delivery of WatCo (or other) IP\Commercialization educational and awareness activities

Qualifications

• Bachelor's degree in Chemistry, Biology, Biochemistry, Physics, Earth Sciences or other natural science discipline. Graduate level degree would also be an asset.
• MBA (or other business diploma\degree) would be an asset
• 5+ years of progressive experience in the private sector, preferably in the material sciences, life sciences, or other scientifically based company, in one or more of research management, product management, intellectual property management/licensing, or technical sales\marketing
• An minimum of 2 years of experience in university technology transfer is desired
• Strong Interpersonal Skills: Must be comfortable with technical and scientific themes in order to effectively communicate with academic faculty in developing IP and commercialization strategies. Further, must be skilled at facilitating business discussions that bridge the gap between the academically- oriented nature of a University and bottom-line driven entrepreneurial goals of business sector partners and venture investors. Must possess a high degree of maturity, competence, and professionalism appropriate for interacting with senior industry partners, investors and members of the University administration
• Demonstrated knowledge and technical experience working in the advancement of natural sciences based research or product development
• Demonstrated leadership ability to engage multiple stakeholders to work collaboratively to build consensus in a complex environment characterized by competing priorities is essential
• Excellent oral and written communication skills, including a comfort level and proficiency in public speaking and the ability to write effectively, authentically, and in a manner consistent with the quality and standard expected of University-level communications
• Demonstrated knowledge and experience in negotiating commercialization deals (i.e., Licensing, startup formation), including managing the development of associated documentation to formalize such deals (i.e., term sheets, license agreements, incorporation, etc.) (preferred but not mandatory)
• Demonstrated ability to develop winning funding proposals and secure partnership agreements
• Demonstrated project - management skills including financial management of project budgets
• Some demonstrated understanding of the patent prosecution process and how patents are classified and cited in order to undertake meaningful patent prior art search strategies
• Demonstrated knowledge and experience in managing intellectual property - related matters (preferred)
• The position is office based and situated within the Faculty of Science working space with some minimal expectation to participate in offsite meetings that may require use of personal vehicle for travel purposes
• The incumbent may also from time- to- time be expected to undertake extended travel, domestically and internationally, that may involve air flights and time away from home, possibly extending into personal time (e.g., travel over weekends).

Equity Statement

The University of Waterloo is committed to implementing the Calls to Action framed by the Truth and Reconciliation Commission. We acknowledge that we live and work on the traditional territory of the Neutral, Anishinaabeg and Haudenosaunee peoples. The University of Waterloo is situated on the Haldimand Tract, the land granted to the Six Nations that includes six miles on each side of the Grand River.

The University values the diverse and intersectional identities of its students, faculty, and staff. The University regards equity and diversity as an integral part of academic excellence and is committed to accessibility for all employees. The University of Waterloo seeks applicants who embrace our values of equity, anti-racism and inclusion. As such, we encourage applications from candidates who have been historically disadvantaged and marginalized, including applicants who identify as First Nations, Metis and/or Inuk (Inuit), Black, racialized, a person with a disability, women and/or 2SLGBTQ+.

All qualified candidates are encouraged to apply; however, Canadians and permanent residents will be given priority.

The University of Waterloo is committed to accessibility for persons with disabilities. If you have any application, interview, or workplace accommodation requests, please contact Human Resources at or 519-888-4567, ext. 45935.