Senior Legal Officer - IP Licensing

The mission of The University of Texas MD Anderson Cancer Center is to eliminate cancer in Texas, the nation, and the world through outstanding programs that integrate patient care, research and prevention, and through education for undergraduate and graduate students, trainees, professionals, employees and the public.

The Senior Legal Officer

• IP Licensing will provide legal counsel, assistance, analysis, and guidance on intellectual property law and legal issues involving patents, copyrights, trademarks, and trade secrets, and on intellectual property-related business and transactional matters involving MD Anderson, with a particular emphasis on transactions and legal issues concerning the patentability, development, and commercialization of MD Anderson inventions and technology.

KEY FUNCTIONS

Legal Professional

The Senior Legal Officer

• IP Licensing will:

1.Support the Office of Technology Commercialization ("OTC") and Strategic Industry Ventures ("SIV"). In performing this function, the Senior Legal Officer

• IP Licensing will:

• Work closely with the OTC personnel who are managing and administering MD Anderson's inventions and technology and the SIV/OTC personnel who are negotiating technology licensing transactions and other related contracts;

• Work closely with other attorneys in the Legal Services Department who are also providing legal services to SIV/OTC.

• Assist in the assessment of the patentability of MD Anderson's inventions and discoveries.

• Provide legal services with respect to the commercialization and development of MD Anderson inventions and technology, including, but not limited to, the review, negotiation, and drafting of patent and technology licensing agreements, options agreements, inter-institutional agreements, and confidentiality agreements.

2.Undertake and perform the following functions:

• Assist in the assessment, development, protection, and enforcement of MD Anderson's intellectual property rights.

• Provide assistance, analysis, and legal counsel with respect to issues of infringement and non-infringement of the intellectual property rights of others.

• Provide legal counsel on current and proposed business transactions, policies, decisions, and other MD Anderson activities.

• Review, analyze, negotiate, and prepare a wide range of legal documents and contracts.

• Respond to legal inquiries from institutional clients.

• Serve on Institutional committees.

• Assist the Managing Legal Officer Intellectual Property in coordinating departmental activities.

• Work closely with other attorneys in the Legal Services Department and assist in the supervision of legal assistants and other support staff in the Legal Services Department.

Legal Resource

The Senior Legal Officer

• IP Licensing is responsible for the following duties and activities:

1.Performs all functions of a legal professional employed as in-house counsel as directed by the Managing Legal Officer Intellectual Property, the Associate Vice President and Deputy Chief Legal Officer, the Vice President and Chief Legal Officer, and the Senior Vice President for Legal and Regulatory Affairs, including communications with clients, preparation of legal opinions, memoranda, documents, reports, and agreements as appropriate.

2.Assists in the identification, assessment, development, protection, and enforcement of MD Anderson's intellectual property rights, including patentable subject matter created at MD Anderson, works of authorship subject to copyright, and trademarks, and assists in the management of outside counsel on issues related to intellectual property and commercialization of intellectual property.

3.Serves as a resource for MD Anderson in the review, analysis and appropriate handling of legal issues related to intellectual property matters, including all issues arising under patent, copyright, trademark, and trade secrets law, and responds to requests from MD Anderson staff and management related to contracts and agreements and intellectual property issues and provides answers consistent with state/federal law and institutional policy in a timely manner.

4.Provides freedom-to-operate analysis and identifies potential infringements that require offensive or defensive action.

5.Provides assistance, analysis, and legal counsel with respect to issues of infringement and non-infringement of the intellectual property rights of others.

6.Drafts and reviews or supervises the drafting and reviewing of standard and nonstandard contracts (such as Confidentiality Agreements, Research-related Agreements, Software Agreements, Copyright License Agreements, Trademark License Agreements, Option Agreements, and Patent and Technology License Agreements) and assures that contractual language complies with applicable state and federal laws, UT System (Regents') rules, and Institutional standards and that the contracts are executed in accordance with UT System and Institutional requirements and procedures.

7.Assists with the review of institutional policies and procedures as related to intellectual property transactions and issues.

8.Assists in the development, preparation and provision of educational programs for MD Anderson's faculty, staff, and employees regarding intellectual property and legal issues.

9.Represents MD Anderson in contract negotiations and meetings with third parties.

10. Works as appropriate with MD Anderson personnel, attorneys and other personnel from UT System, and attorneys from the private sector and state agencies.

11. Assists in maintaining a database of essential contracts and agreements, periodically reviews this information with the Managing Legal Officer Intellectual Property, the Associate Vice President and Deputy Chief Legal Officer, the Vice President & Chief Legal Officer, and the Senior Vice President for Legal and Regulatory Affairs, and prepares periodic reports on contracts and agreements for senior management.

12. Establishes appropriate contacts with other MD Anderson Legal Officers, other attorneys at the UT System and UT components, and outside attorneys, as needed, in order to maintain professional contacts and a rapport between these various groups and the Legal Services Department.

13. Coordinates the preparation of any assigned special projects to assure completion and timely presentation.

14. Assumes responsibility for maintaining professional licensure, fulfilling professional continuing education requirements and maintaining current knowledge of legal matters relating to intellectual property, business and health law.

15. As requested, provides institutional support and serves on MD Anderson committees.

16. Provides legal representation and services, as needed, to primary client consisting of the OTC.

17. Performs other duties, as necessary or desirable, to assist the Legal Services Department in providing timely and effective legal services to a large health care institution. In particular, as with other positions in the Legal Services Department, this position/individual may also respond to requests from the President of the Institution, the Senior Vice President of Legal and Regulatory Affairs, and/or the Senior Vice President for Research Administration & Industry Relations.

18. Assists the Managing Legal Officer Intellectual Property, as requested, in providing supervision, management and professional guidance for legal officers, legal assistants, and other Legal Services support personnel.

Other Performs other duties as assigned and required.

REQUIREMENTS

Required Education: Juris Doctor

Preferred Education: Multiple Degrees

Required License: Must be currently licensed by the State Bar of Texas or another state with acquisition of Texas license within one year of date of employment.

Required Experience: Six (6) years (or relevant equivalent experience) as an attorney in a law firm, hospital/health system, academic medical center, and/or corporate business legal department with significant patent and technology licensing experience and a background in intellectual property law.

Preferred Experience: Substantial knowledge regarding patents, copyrights, trademarks, and trade secrets, and extensive legal experience in negotiating and drafting patent and technology licensing agreements and working in a transactional practice.

It is the policy of The University of Texas MD Anderson Cancer Center to provide equal employment opportunity without regard to race, color, religion, age, national origin, sex, gender, sexual orientation, gender identity/expression, disability, protected veteran status, genetic information, or any other basis protected by institutional policy or by federal, state or local laws unless such distinction is required by law. http://www.mdanderson.org/about-us/legal-and-policy/legal-statements/eeo-affirmative-action.html

Additional Information

• Requisition ID: 168544

• Employment Status: Full-Time

• Employee Status: Regular

• Work Week: Days

• Minimum Salary: US Dollar (USD) 0

• Midpoint Salary: US Dollar (USD) 0

• Maximum Salary : US Dollar (USD) 0

• FLSA: exempt and not eligible for overtime pay

• Fund Type: Hard

• Work Location: Hybrid Onsite/Remote

• Relocation Assistance Available?: Yes