Job Opening: OTT Seeks Technology Licensing, Monitoring, and Enforcement Specialist
The NIH Office of Technology Transfer (OTT) is hiring for a Technology Licensing Monitoring and Enforcement Specialist. You must qualify as a GS-13 for this position. Application is open from March 28 to April 1, 2022.
Office of Technology Transfer (OTT) staff provide management and oversight of the collection and disbursement of royalties, monitor and enforce patent rights and licensing agreements, coordinate the payment of all patent annuities, market to and communicates with existing and potential licensees, and provide legal docketing and technology development support and expertise for the NIH Technology Transfer community.
Duties of this position include:
- Develops annual monitoring plan for review of licenses. Monitors exclusive license activities on an annual basis. Conducts reviews of nonexclusive licenses at least once a year.
- Conducts and often serves as a lead member in reviews of the status of license compliance with license terms, including such items as: a) progress toward commercialization; b) meeting of time frames and substance of license benchmarks; c) consent for the sublicense; d) consent for assignment; e) monitoring of public information related to commercial development; f) adherence to royalty provisions of the license; g) adherence to patent assistance provisions; h) action regarding public access; i) identification of product names in clinical trials and when they come on to the market; j) ensuring receipt of sample products packaging; k) resolution of manufacturing issues; l) initiation and resolution of third party audits; m) resolution of bankruptcy issues; and n) other items that may be required under individual licenses.
- Develops and maintains a monitoring file associated with each license and records review activities, findings if any, actions taken, and the final resolution.
- Conducts follow-up with licensees' cases referred by the OTT Royalties Administration staff or others, either internal (government) or external (non-governmental) stakeholders, who believe there may be a compliance or reporting problem with a particular licensee or license.
- Works with senior NIH staff to review allegations when information is received claiming a licensee is not pursuing commercialization and requesting the NIH to exercise its right to amend or terminate the license under 35 USC 290(d)(3). The employee will work in coordination with the Office of General Counsel and technology transfer personnel in the ICs to prepare documentation on the case and develop recommendations for action by the Director, OTT or for action by a duly authorized officer in the ICs.
- Works with senior key staff at licensee organizations to discuss progress and other issues as appropriate, and may require additional information to be submitted. Consults with OTT, IC staff and the Office of General Counsel, as appropriate, to determine whether progress is reasonable or not and what action would be most appropriate.
- Develops and maintains an automated system for tracking key elements of each license.
- Conducts an analysis of licensing terms and conditions that create monitoring difficulties and provide a report on such information to the employee's supervisor, at least annually and preferably on a more frequent basis.
- Attends meetings of the Monitoring and Enforcement Unit and other regular meetings as directed to keep apprised of legal and administrative licensing issues and concerns.