Advocacy 20 Creating an internal IP-aware culture resulting in early capture of IP

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1 Telethon Institute for Child Health Research Job Description Why is this Job Description being written? New Position Replacement Position Position re-designed Position not previously described P O SITION DET AI L S: Position Title: M AN AG ER INT ELLE CT UA L P R OP ER T Y AN D COMME RC IALI SA T I ON Division: ACS Department: Communications and Development Position reports to: (role) Location: include all possible locations Head of Research Development 100 Roberts Road Subiaco P O SITION PURPOSE: In one or two sentences briefly summarise the overall purpose of this role, i.e. broadly, what this role does and why This position will have an emphasis on building a culture of commercialisation within the Institute. The role will be responsible for growth and management of the institute s Intellectual Property (IP) portfolio through a proactive hands-on approach, encouraging and capturing invention disclosures and defining a route for commercialisation of IP, including increasing internal awareness of IP and commercialisation. It will oversee development and negotiation of legal agreements including MTAs, CDAs and collaboration/licence agreements with academic and/or industry partners. The role will also work collaboratively to identify, capture, protect and commercialise IP generated at the institute. Additionally, the role will oversee the contract review and management aspects more generally. K E Y R E SP ON S IBILIT Y A REAS (Please list in order of importance) Key Position Accountabilities What are the main areas for which the position is accountable % of Total Role Inputs: What are the key activities or tasks to be carried out? Compliance 10 Provide advice and general assistance on IP and Commercialisation matters Ownership of the Institute s key policies relating to IP management Compliance with funding bodies policies and procedures. Keep up to date with IP trends and legislation change Establish and support a commercialisation committee as and when appropriate IP Budget accountabilities Outputs: What are the expected end results? Compliant with legislation Current and relevant policies Finance and Governance accountabilities Measures: How it is measured Stakeholder feedback 1

2 Advocacy 20 Creating an internal IP-aware culture resulting in early capture of IP Commercialisation and Business Development Work with Institute researchers to help tailor research programs to maximise IP potential Advocate commercialisation through staff presentations/education and working with leadership groups 45 Contribute to a culture of innovation and strategic thinking in commercialisation Grow the IP portfolio via invention disclosures, patents and trademarks Develop appropriate IP protection strategies together with researchers Keep up to date with Institute research developments and investigate related business development opportunities Review current publications for relevant articles, including proposed publications prior to actual publication for possible IP opportunities Review all grant applications for potential IP opportunities Undertake market research for product/technology potential Research and identify potential commercial partners, including contract research opportunities, license and collaboration agreements Develop information packs as for presentation to potential partners Develop patent specifications, undertake reviews of prior art etc Develop a working relationship with the Medical Research Commercialisation Fund as part of the identification and funding of early stage commercialisation opportunities Identify and develop NHMRC Development or ARC Linkage grant opportunities, or other equivalents Greater acceptance of commercialisation as a research translation route Growing IP portfolio New funding from commercial sources Increased stakeholder awareness and engagement Increased IP Identification Successful commercialisation of IP Increased internal awareness of IP Positive stakeholder feedback Contract Review and Information Management 15 Timely and efficient advice and review of agreements, including Commercial, Government and non-government contracts, CDAs, MTAs, collaboration and licence agreements Management of IP, patent & contract management database and appropriate monitoring of processes and practices Efficient review and management processes Effective IP & Contract management 2

3 Stakeholder Management and Networking 10 Adopt a client-orientated approach engaging with a wide variety of internal and external stakeholders to add value to the research activities of the institute Manage relationship with patent attorneys Benchmarking our commercialisation activities and approach with other Institutes Effective stakeholder management Improved relationships with key government, clinical and community groups Feedback from internal and external stakeholders Increased stakeholder awareness and involvement Understand and explore Government sponsored support schemes, such as Commercialisation Australia Develop key networks in the sector, including other medical research institutes and industry bodies such as AusBiotech and the Licensing Executives Society 3

4 E SSENTIAL SKI LLS, KN O W LE DG E A ND EXPE RI ENCE: Qualifications: what are the minimum educational, technical Relevant scientific qualifications or professional qualifications required to competently perform role Skills, Knowledge & Experience: Five or more years experience in the field of IP management D E SIRA BLE SKILLS, KN O W LE DG E A ND EXPE RI ENCE: Outstanding communications skills, both verbal and written Demonstrated ability to build relationships with research staff, external patent attorney, lawyers and other key stakeholders Experience in commercialisation in an academic medical research environment Outstanding negotiating skills Sound understanding of legal and commercial issues and risk A client-focused approach to add value to the research and translational activities of the institute Highly motivated, able to establish priorities, set and maintain deadlines and a demonstrated ability to use initiative Qualifications: what are the minimum educational, technical or professional qualifications required to competently perform role Skills, Knowledge & Experience: S C O P E: Legal and/or Patent qualifications Financial accountability: Does this role have accountability for a budget? Yes, IP Commercialisation budget within the broader Research Development activity People responsibility: Does this role have any direct reports or indirect reports (through direct reports)? No. of direct reports 0 No. of indirect reports 1 4

5 O R GANISATIONAL C HA RT : (please complete using position titles or insert diagram below) Next level of supervision Director, Communications & Development Immediate level of supervision Head of Research Development Other roles reporting to immediate supervisor Manager Intellectual Property and Commercialisation Officer, Project Direct reports (role x no.) A D DITION AL INFORMA T I ON: is there any additional information that needs to be understood to explain this role? 5