Technology Transfer Specialist (SWSIE)

Technology Transfer Specialist (SWSIE)

Skysong Innovations is ASU’s exclusive technology transfer and intellectual property management company responsible for the rapid and wide dissemination of ASU’s discoveries and inventions into the marketplace for the public good.   

The Technology Transfer Specialist identifies, evaluates, protects, markets, and/or out-licenses innovative, science-based technologies created at Arizona State University (ASU). The Technology Transfer Specialist focuses on technologies created at ASU within, or synergistic with, the NSF-funded Southwest Sustainability Innovation Engine (SWSIE) while also contributing to other technology transfer activities within Skysong Innovations.

Additionally, the Technology Transfer Specialist centrally coordinates with the technology transfer offices of ASU’s SWSIE partner institutions (the University of Utah; the University of Nevada, Las Vegas; and the Desert Research Institute) and other SWSIE ecosystem partners to maximize SWSIE’s introduction of real-world solutions to the market for the public good.   

This position is primarily funded by an external National Science Foundation grant with an initial term of two years that ends on February 28, 2026. The granting organization has the discretion to extend the funding for additional periods, potentially up to a maximum total of 10 years, including the initial term. This position’s continued existence beyond the initial two-year period depends on the availability of further funding, which is not guaranteed, in addition to other factors.

If selected, the applicant’s employment in this position will be at-will, meaning either the employee or the company may terminate the employment relationship at any time, with or without cause or notice. This job description does not constitute a contract or guarantee of employment for any specific duration. No manager, supervisor, or representative of the company has the authority to alter this at-will employment relationship, except through a formal written agreement signed by the employee and the company’s executive officer.

What you’ll do: 

Intellectual Property

• Interacts closely with ASU researchers to understand their research activities and solicits and assists with the completion and submission of invention disclosures
• Analyzes invention disclosures, understands invention features, provides analyses and recommendations, and performs substantive and procedural tasks associated with the filing, protection, and maintenance of intellectual property, especially intellectual property developed at ASU within, or synergistic with, SWSIE
• Works with researchers to explain ASU’s technology transfer activities, particularly regarding invention disclosures, the patent application process, and Skysong Innovations’ standard procedures and practices
• Monitors researchers’ scientific publications, looks for potential invention disclosures and becomes familiar with specific research activities
• Works with outside patent counsel and ASU inventors in crafting patent applications and responses to patent office actions and other information requests, consulting with and/or escalating matters to the Director of Intellectual Property and/or the Chief Patent Counsel when needed
• Manages patent prosecution budgets for assigned cases
• Provides best-in-class IP services to researchers and staff by maintaining and further developing links in relationships between researchers and outside counsel, helping to navigate complex, sensitive issues, keeping the University’s best interest in mind, and advising researchers on best practice
• Serves as the primary point of contact for researchers and staff, fostering productive relationships with campus administrators and student innovators, and ensures ongoing engagement, participation, and support for innovation and discovery while facilitating their connection with technology transfer operations
• Works with internal leadership and the Skysong Innovations business development team to prepare reports and presentations communicating strategies, activities, and results obtained in the solicitation and management of intellectual property, especially for intellectual property developed at ASU within, or synergistic with, SWSIE

Marketing

• In consultation with researcher inventors, leads full-cycle marketing efforts to potential licensees and/or venture development firms via email, phone, and face-to-face interactions, especially for intellectual property developed at ASU within, or synergistic with, SWSIE
• Creates nonconfidential summaries and/or presentations
• Performs market research to identify potential licensees
• Executes tailored marketing campaigns

Licensing and Business Development

• Lead full-cycle licensing negotiations from term sheet to definitive agreement in partnership with the Director of Licensing and Business Development and Skysong Innovations’ in-house legal counsel, especially for intellectual property developed at ASU within, or synergistic with, SWSIE
• Designs and proposes initial term sheets for licensing deals based on a variety of factors, including but not limited to established licensing norms and internal/external market comparables
• Drafts licensing agreements using established templates and approved language while working closely with the Director of Licensing and Business Development and Skysong Innovations’ in-house legal counsel
• Evaluates and discusses sophisticated and often innovative technologies regularly
• Facilitates the advancement of ASU startup companies when appropriate
• Provides business and technical insights concerning technologies and possible commercialization opportunities and pathways, particularly in the context of licensing deals and key decisions arising in associated patent prosecution timelines
• Supports colleagues in ongoing compliance activities related to active agreements
• Serves as a helpful partner to connect various stakeholders within the university ecosystem, which may include supporting opportunities with corporate collaborators regarding the use of ASU and SWSIE physical resources, facility use agreements, sponsored research agreements, or joint funding proposals
• Maintains up-to-date project statuses via internal databases to ensure accurate tracking and reporting
• Reports on and raises issues for discussions regarding negotiations and deals during recurring licensing meetings led by the Director of Licensing and Business Development
• Makes and delivers presentations to researchers, students, industry, university leadership, and boards, which may include attending conferences to present SWSIE and ASU capabilities to attract technology transfer opportunities and other mutually beneficial industry engagements
• Provides mentorship, training, supervision, and learning opportunities to interns, externs, and/or student workers as needed

Cross-Partner Coordination

• Coordinates with the technology transfer offices of ASU’s SWSIE partner institutions (the University of Utah; the University of Nevada, Las Vegas; and the Desert Research Institute) in the tracking and coordination of invention disclosure, patenting, and licensing activities related to intellectual property created within SWSIE
• Coordinates, as needed, the process for resolving certain disputes among SWSIE participants
• Collaborates with the sustainability community to establish partnerships, aid in the creation of startups, and facilitate the licensing process
• Supports strategies for patenting and licensing within SWSIE
• Promotes and tracks reporting to the National Science Foundation regarding invention disclosures, patents, and licenses for intellectual property created within SWSIE
• Supports researchers on intellectual property matters related to grant proposals for funding from public and private sources
• Analyzes statements of work within material-transfer agreements, joint-development agreements, and sponsored-research agreements to determine whether identified materials are subject to existing ASU patent protection and, if not, makes a recommendation for whether patent protection is appropriate 

What you'll need:  

• Advanced understanding of intellectual property principles, particularly those related to patents
• Ability to identify and technically evaluate a wide range of sustainability-oriented technologies concerning their protectability, commercial potential, and application as products and processes in real-world situations
• Ability to manage external patent counsel in efforts to secure patent protection for inventions and make suggestions to draft patent filings to improve quality
• Ability to design and execute marketing campaigns for innovative, science-based technologies
• Ability to distill complex technical subject matter into concise, understandable summaries that highlight the practical benefits of an invention without divulging confidential information
• Ability to collaboratively negotiate business terms for a wide array of licensing agreements, including term sheets, option agreements, and long-form, definitive license agreements
• Ability to recognize circumstances that require escalation and additional discussions with the Executive Director, Director of Licensing and Business Development, Skysong Innovations’ in-house legal team, and/or other Skysong Innovations colleagues
• Experience using IP management databases and systems
• Familiarity with the Bayh-Dole Act
• Understanding of academic values with the ability to communicate the critical role of technology transfer to the academic innovation culture
• High level of empathy and situational awareness—capable of independently interacting and building positive relationships with a variety of sophisticated stakeholders, including senior researchers, university executives and administrators, investors, entrepreneurs, technology executives, and community leaders
• Entrepreneurial mindset and creative problem solver, adept at proactively identifying problems and opportunities and devising and executing solutions
• Ability to continuously educate oneself about new technologies
• Team-oriented strategist able to effectively manage complex situations involving numerous and sometimes competing constituencies
• Collaborative style, combined with the ability and desire to work in a team-based environment
• Ability to handle sensitive matters with discretion and tact while maintaining a high degree of confidentiality and responsibility regarding information related to Skysong Innovations (SI) and ASU
• Strong and collegial interpersonal skills and an ability to communicate effectively in person, writing, and by phone with researchers, administrators, and industry
• Self-starter who demonstrates a high level of initiative; ability to advance projects toward an ultimate objective in a collaborative environment
• Deadline-driven, highly organized individual able to work independently and handle multiple high-priority tasks in a fast-paced and fluid environment
• Adept at navigating complex environments with evolving priorities and communication plans
• Attention to detail and thoroughness in completing assigned duties
• Ability to effectively represent and promote the institution
• Excellent public speaking skills
• Ability to network effectively with a broad array of potential partners

Relevant Qualifications: 

• Bachelor’s degree in a science or engineering discipline with a demonstrable understanding of sustainability-oriented technologies
• A minimum of four (4) years of relevant experience, including at least two (2) years of relevant technology-transfer experience that included identifying, evaluating, protecting, marketing, and out-licensing innovative, science-based technologies.

Preferred Qualifications: 

• Bachelor’s degree in environmental engineering or other discipline related to sustainability-oriented technologies
• Master’s or PhD in a science or engineering discipline
• A minimum of four (4) years of relevant technology-transfer experience, including experience identifying, evaluating, protecting, marketing, and out-licensing innovative, science-based technologies
• Experience with Minuet intellectual property management/technology transfer software