Legal Counsel - Research and Commercialization Agreements

  • University Health Network (UHN)
  • Toronto, Ontario, Canada
  • Jul 16, 2021
Full time Lawyer (In House Counsel)

Job Description


Position: Legal Counsel – Research and Commercialization Agreements
Site: University Health Network
Reports to: Legal and Intellectual Property Counsel
Department: Legal Affairs
Status: Permanent Full-time

With a long tradition of groundbreaking firsts and a vision of achieving global impact through exemplary patient care, research and education, the University Health Network (UHN), consists of seven research institutes located within the hospital system comprised of Princess Margaret, Toronto General, Toronto Rehabilitation (KITE), Krembil Research Institute, Techna, McEwan Stem Cell Institute, and The Institute for Education Research (TIER) with all affiliated with the University of Toronto.

As Canada’s largest research hospital, UHN has a proud history of innovative research and important discoveries. Researchers at UHN are focused on investigating the causes of numerous diseases and are developing new and better ways to treat them and deliver better care. Princess Margaret is ranked as one of the top 5 cancer research centres in the world and Toronto General ranks as number four of the world’s best hospitals, and is the only Canadian hospital in the top 10.

UHN considers innovation and the commercial development of Intellectual Property (IP) to be integral to its mission and values. UHN is one of the first academic institutions to have senior IP and commercialization legal expertise in-house and working closely together with the business commercialization team to help support the commercialization objectives of the Institution. The close affiliation between business, legal and intellectual property expertise has already paid off significant dividends for UHN. UHN has built one of the most successful research commercialization groups in North America, with IP discovered and developed at UHN having already formed the basis for many global products and services including pharmaceuticals, biologics, devices, and diagnostics. Intellectual Property developed by UHN Researchers represents the foundation for spin-out companies which have generated a combined market valuation well over a billion dollars over the last three years (i.e. e.g. Northern Biologics, AvroBio, BlueRock Therapeutics, and Acumyn). Furthermore, UHN commercialization activities have generated over 68 Million dollars in revenue for UHN since 2018.

This is an exciting opportunity to join UHN as Legal Counsel – responsible for Research and Commercialization Agreements, and to play an integral role in supporting the research and commercialization activities of UHN as we grow and build value to ultimately support UHN’s mandate of improving patient care.


UHN is seeking a strategic and results-oriented lawyer to join its Legal Affairs Department. Aligned with the UHN’s strategic research direction, the candidate will provide a spectrum of legal services respect of a diversity of research-related and commercialization activities. The Legal Counsel will support the Legal and Intellectual Property Counsel and other members of Legal Affairs in drafting, maintaining and monitoring UHN legal and contractual obligations associated with research-related activities; providing expert legal advice and support to Commercialization group (TDC) and other UHN stakeholders; performing legal research/education responsibilities; performing cross-functional and other responsibilities as assigned and/or requested. The Legal Counsel will also serve as a point of contact for a diverse array of UHN Research stakeholders (e.g. Principal Investigators, Research Personnel), UHN departments (e.g. StRIDe/Grants office, Clinical Trials Agreement Office (CTAO), Corporate Legal Affairs, Privacy/Compliance, Research Ethics Board (REB)) and external corporate/academic research and/or commercialization partners.


• Advises UHN stakeholders and management on legal matters relevant to research-related and commercialization activities
• Knowledge of intellectual property law is required.
• Experience in privacy and/or corporate law would be an asset
• Negotiates, drafts and reviews a diverse assortment of legal agreements, including license agreements, option agreements, sponsored research agreement, collaboration agreements, co-development agreements, data transfer agreements, service agreements, material transfer agreements, consortium agreements etc.
• Provides expert legal assistance and guidance to commercialization colleagues on files under their active management
• Identifies areas of potential legal and statutory risks in respect of UHN research-related contractual matters, and makes recommendations to ensure management of such risk
• Works with UHN clients to ensure ongoing contractual relationships are properly conducted to mitigate against contractual breaches
• Coordinates between various UHN departments to ensure that contractual obligations for ongoing grant, research, privacy and business activities are properly documented and consistent across UHN
• Stays abreast of legislative developments in areas of privacy, regulatory law, intellectual property law (both domestic and foreign) as particularly relevant to transactions, remedies, and contract law to ensure “best practices” in contractual matters
• Conducts fact-finding and legal research on a variety of research-related legal matters of a potential litigious nature (e.g. IP ownership and/or faulty chain of title, conflicting contractual obligations, etc.)
• Consults with/refers to internal/external resources as required (including funding and government agencies, external counsel, and other UHN departments)
• Identifies and reports relevant findings and recommendations to UHN management
• Participates in the provision of training to UHN Personnel on relevant and changing legal, IP and regulatory matters
• As required, participates on UHN committee(s)

At minimum, completion of an undergraduate or graduate degree, preferably with a scientific background; and a Bachelor’s Degree in Law (or recognized equivalent)
• Demonstrated ability to work cooperatively with colleagues, and effectively as part of a team
• Some familiarity with an academic or hospital research institution is preferred
• Fairness, openness, patience and a high level of integrity
• Excellent verbal and written communication skills required
• Excellent customer service, interpersonal and diplomacy skills
• Excellent organizational and time management skills required to handle competing priorities/deadlines
• Excellent analytical and problem-solving skills
• Eagerness to engage in the further development of legal knowledge and skills in a self-directed manner, and work with limited supervision
• At minimum, five (5) years of practical related legal experience, derived from a top tier law firm and/or in-house.
• Demonstrated experience in negotiating, drafting and/or reviewing contracts pertaining to academic research-related and/or intellectual property commercialization matters.
An ability to develop and sustain effective and collaborative professional working relationships and partnerships both within UHN, and with external colleagues/collaborators.
• Some proficiency in the use and maintenance of computer database systems and data analytics is preferred.
• Member in good standing with the Law Society of Ontario

If you are interested in making your contribution at UHN, please apply on-line. You will be asked to copy and paste as well as attach your resume and covering letter. You will also be required to complete some initial screening questions.

POSTED DATE: July 15, 2021 CLOSING DATE: Posted Until Filled