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Technical Transfer Officer

Class Specifications – F.25
Technical Transfer Officer I – 0356
Technical Transfer Officer II – 0367
Technical Transfer Officer III – 0368
Technical Transfer Officer IV – 0369

December, 2004

Class Concepts

Technical Transfer Officer I

Responsible for evaluating commercial potential, formulating and implementing licensing strategy, and negotiating and drafting agreements for a portfolio of inventions. Contributes to the resolution process in legal disputes. Works with outside patent attorneys to file patent applications. Under guidance, negotiates intellectual property clauses in sponsored and collaborative research agreements. Under guidance, negotiates material testing and transfer agreements. Conducts legal and/or policy analysis and recommends exceptions to policy.

Performs activities requiring resolution of problems of moderate technical scope in support of technology transfer. Focus of activities may be as a generalist (supporting the cradle to grave lifecycle) or as a specialist (focused upon a specific function such as marketing. Assignments may include evaluating commercial potential of inventions; marketing the technology to prospective licensees, licensing strategy formulation; negotiating and drafting agreements; executing limited agreements; business / financial analysis in relation to proposed legal dispute settlements; managing attorney prosecution of patent applications; negotiating intellectual property clauses in sponsored/collaborative research agreements and material testing/transfer agreements; conducting legal and/or policy analysis and recommending exceptions to policy.

Well-defined, moderately complex, somewhat predictable, and usually short- to medium-term duration.

Works under close supervision of higher-level TTO, where specific instructions are provided and established work policies and procedures exist.

Performs tasks requiring working knowledge of and application of standard principles, theories and concepts such as laws, regulations, and practices pertaining to the protection and management of intellectual property, university technology transfer, and general scientific and/or technical skills in subject matter area. Interaction requires effective communication, and the use of discretion and judgment. Contacts are primarily with immediate supervisor and others in the department, but may also include UCOP, campuses, and external organizations.

Technical Transfer Officer II

Responsible for evaluating commercial potential, formulating licensing strategy, negotiating and drafting agreements, and executing limited agreements for a substantial portfolio of complex inventions. Recommends resolution to legal disputes. Works with outside patent attorneys to file patent applications. Negotiates intellectual property clauses in complex sponsored and collaborative research agreements. Negotiates complex material testing and transfer agreements. Executes individual exceptions to policy. Supervises one or two lower staff.

Performs activities requiring resolution of a variety of problems of moderate to difficult scope in support of technology transfer .. Focus of activities may be as a generalist (supporting the cradle to grave lifecycle) or as a specialist (focused upon a specific function such as marketing.

Assignments may include evaluating commercial potential of inventions; marketing the technology to prospective licensees, licensing strategy formulation; negotiating and drafting agreements; executing limited agreements; recommending business and financial terms in proposed legal dispute settlements; managing attorney prosecution of patent applications; negotiating intellectual property clauses in sponsored/collaborative research agreements and material testing/transfer agreements; conducting legal and/or policy analysis and recommending exceptions to policy.

Generally defined, moderately complex, somewhat predictable, usually medium-term duration.

Works under direction of higher-level TTO where some interpretation of established work policies and procedures is required, and, at times deviation from standard work practices may be needed.

Performs tasks requiring thorough knowledge of and application of standard principles, theories, and concepts and techniques such as laws, regulations, and practices pertaining to the protection and management of intellectual property, university technology transfer, and general scientific and/or technical skills in subject matter area.

Interaction requires effective communication, and the use of discretion and judgment. Contacts include others in the department, UCOP, campuses, and external organizations.

Technical Transfer Officer III

This is a senior level technology transfer position that may, in whole or in part, report to the Executive Director, but rather than being an administrative manager, the Technology Transfer Officer 3 is recognized expert in some aspects of technology transfer. Responsible for evaluating commercial potential, formulating licensing strategy, negotiating and drafting agreements, and executing agreements for a very substantial portfolio and/or unique and very complex inventions.

Reviews and approves agreements. May approve settlement of legal disputes. Negotiates intellectual property clauses in unique and complex sponsored and collaborative research agreements, including systemwide, campus-wide or company-wide. Executes broad exceptions to policy. Serves as a mentor for lower level Technology Transfer Officers.

Performs multiple simultaneous activities requiring imaginative, practical and thorough solutions to a wide range of difficult problems in technology transfer.

Assignments may include evaluating commercial potential of inventions; marketing the technology to prospective licensees, licensing strategy formulation; negotiating and drafting agreements; executing limited agreements; recommending business and financial terms in proposed legal dispute settlements; serving as a policy witness for the University; managing attorney prosecution of patent applications; negotiating intellectual property clauses in sponsored/collaborative research agreements and material testing/transfer agreements; conducting legal and/or policy analysis, and recommending exceptions and/or executing limited exceptions to policy.

Partially defined, complex, unpredictable, often long-term duration.

Works under general direction of TTO IV, with significant latitude for exercising judgment and self-direction. Independently determines and develops approaches and strategies. Work normally reviewed upon completion or at periodic intervals for adequacy in meeting objectives.

Recognized expert in specific aspect of technology transfer. Performs tasks requiring state-of-the-art knowledge in subject area and broad application of principles, theories and concepts such as laws, regulations, and practices pertaining to the protection and management of intellectual property, university technology transfer, and scientific and/or technical skills in area of expertise.

Interaction requires effective communication, and the use of discretion and judgment. Contacts are frequently external to department, involving other departments, campuses or organizations.

Technical Transfer Officer IV

This is the senior level technology transfer position reporting to the Executive Director. Primary focus is management of a medium-sized unit. Represents the department on intellectual property matters. May directly manage a small portfolio of unique inventions. Reviews and approves agreements. Approves settlements of legal disputes. Negotiates intellectual property clauses in unique and complex sponsored and collaborative research agreements. Executes broad exceptions to policy.

Performs many simultaneous and interconnecting activities requiring innovative solutions to unique and complex problems in technology transfer.

Assignments may include representing department on intellectual property matters; evaluating commercial potential of inventions; marketing of licensing technology, approving negotiation strategy; negotiating, reviewing and approving agreements; approving business and financial terms in legal dispute settlements; serving as a policy witness for the University; managing attorney prosecution of patent applications; negotiating intellectual property clauses in sponsored/collaborative research agreements; and executing broad exceptions to policy.

Ill-defined, very complex, unpredictable, and often long-term duration.

Works under broad direction of Executive Director, with extended latitude for exercising judgment and self-direction. Assignments frequently self-initiated. Determines and pursues course of action necessary to obtain desired result. Work checked through consultation and agreement with others rather than by formal review by supervisor.

Performs tasks requiring state-of-the-art knowledge of a broad functional work area, and broad application of advanced principles, concepts and theories such as laws, regulations, and practices pertaining to the protection and management of intellectual property, university technology transfer, general scientific and/or technical skills in subject matter area, and management experience, Contributes to development of new concepts.

High-level interactions within and outside the University on matters of considerable diversity. Frequently in contact with equivalent level inter-organizational managers concerning projects, operational decision, objective clarifications and strategy. Conducts top level briefings and technical meetings.

Minimum Qualifications

Technical Transfer Officer I

Bachelors degree in a relevant field; advanced academic (Masters (JD/MBA) and/or Doctorate strongly preferred); and three to five years relevant experience in a business or academic setting or a commensurate combination of education and experience.

Technical Transfer Officer II

Bachelors degree in a relevant field; advanced academic (Masters (JD/MBA) and/or Doctorate strongly preferred); and five to seven years relevant experience in a business or academic setting or a commensurate combination of education and experience.

Technical Transfer Officer III

Bachelors degree in a relevant field; advanced academic (Masters (JD/MBA) and/or Doctorate strongly preferred); and seven to nine years relevant experience in a business or academic setting or a commensurate combination of education and experience.

Technical Transfer Officer IV

Bachelors degree in a relevant field; advanced academic (Masters (JD/MBA) and/or Doctorate strongly preferred); and ten or more years relevant experience in a business or academic setting or a commensurate combination of education and experience.