The successful candidate will be responsible to coordinate, plan, control and lead the activities involved in maintaining the complete patent portfolio of lawyer/patent agent in order to maximize the efficiency and performance of all resources in this area. This position receives some direction or guidance; most tasks and objectives are accomplished independently.
The incumbent's responsibilities may include but are not limited to the following:
Responsible for designing, implementing and managing the filing systems, processes, the administrative matters necessary to support the patenting and licensing activities for a high volume, fast paced intellectual property legal department.
Docketing all incoming mail for patents, maintaining a patent database.
Reviewing and approving new patent applications for filing in the Canadian Intellectual Property Office (CIPO) by ensuring that abstract, specification, claims and drawings are in accordance with Canadian patent practice; reviewing formal documents for accuracy and consistency with other material received from client; reviewing and preparing, if necessary, formal documents such as Assignments, Petitions, and the like, required for filing in Canada; preparing reporting letters to client respecting the filing of Canadian applications; and scheduling and controlling workflow to meet specific deadlines.
Screening and reviewing all incoming facsimiles and mail and initiating appropriate action where necessary.
Reviewing and monitoring daily diary and due case reports and initiating appropriate action where necessary.
Preparing applications for filing in foreign countries; including determining, when necessary, filing requirements; obtaining and preparing necessary documents, such as, Assignments and Power of Attorney documents for execution by client; transmitting documents to client for execution; preparing letter of transmittal to foreign associate with instructions for filing the application; and preparing reporting letters to client respecting the filing of the applications.
Handling all incoming and outgoing mail; composing letters to incoming correspondence and ensuring that appropriate action is taken.
Preparing responses to formal Examiners Reports and Office Letters from the CIPO and filing other submissions, such as, Request for Examination/Advanced Examination; Assignments; Preliminary/Voluntary Amendments; Payment of Final Fee; Amendment After Allowance.
Reviewing and reporting to client all Official Actions received from the CIPO.
Reviewing and forwarding all letters respecting Notice of Allowances and Letters Patent documents to client.
5+ years directly related experience
Ability to communicate effectively with other Firm members, with the aptitude to take care of clients needs in a professional and courteous manner
Capacity to work independently, as well as in a team environment
Produce a high quality and quantity of work product, occasionally under tight timelines
Able to prioritize and to redefine priorities when necessary
Knowledge of both Canadian and foreign Patent practice (especially US, EP and PCT)
Knowledge of the Intellectual Property in-house database and sequence listings and assignments
Handle stress in a business-like manner
Knowledge of Microsoft Office Suite
Legal Assistant Diploma or Certificate
Previous Law Firm experience along with a legal diploma is required for this position.
Our client offers a very competitive compensation and benefit package!
We thank all interested applicants but only selected candidates will be contacted.