Legal Assistant, Intellectual Property

McCarthy Tétrault LLP • Vancouver, BC

27d • Hybrid

About The Position

McCarthy Tétrault is a Canadian law firm that offers a full suite of legal and business solutions to clients in Canada and around the world. The firm has been recognized as one of Canada’s Top 100 Employers and Canada’s Best Diversity Employers. Their culture is built on professional excellence, collaboration, innovation, thought leadership, and entrepreneurialism, embracing inclusion and providing tools for development. They are recruiting for a Legal Assistant, IP to join their team in the Vancouver office. The successful candidate must have a minimum of 3 years’ experience as a legal assistant in an Intellectual Property group and will be responsible for filing patent, trademark, industrial design, and copyright applications with Canadian Intellectual Property Office, the United States Patent and Trademark Office (USPTO), and other administrative functions. McCarthy Tétrault employees benefit from a hybrid work environment with 3 days in the office per week.

Requirements

• Minimum 3 years experience as a Legal Assistant in Intellectual Property.
• In-depth knowledge of patents required – preferably within Canada, the United States and Europe.
• Legal Assistant diploma or college certificate in office or business administration or equivalent.
• High level of discretion and confidentiality and capacity to handle extremely sensitive information.
• Exceptional communication (written/spoken) and interpersonal skills.
• Ability to provide excellent and timely service to clients and colleagues by understanding their needs and using available resources.
• Ability to work effectively with others by being flexible, respectful, communicating clearly, and proactively sharing knowledge and offering assistance.
• Demonstrates relevant expertise, critical thinking skills and initiative to consistently deliver quality work.
• Walks the talk, respects individual differences, and supports the Firm’s interests.

Nice To Haves

• Trademark experience would also be as asset.

Responsibilities

• Preparing and filing patent, trademark, industrial design, and copyright applications with Canadian Intellectual Property Office (CIPO) via fax, courier, and CIPO online tools, including generation of cover letters, and fax cover sheets.
• Preparing and filing patent and trademark applications with United States Patent and Trademark Office (USPTO) using USPTO online tools.
• Preparing and filing PCT patent and Madrid trademark applications with World Intellectual Property (WIPO) using WIPO online tools.
• Providing comprehensive support throughout the intellectual property prosecution lifecycle, including assisting with the preparation and filing of responses, amendments, examination requests, and other prosecution related documentation.
• Managing the docket for the Partner, including overseeing and reviewing deadlines for other lawyers on the team on behalf of the practice, to ensure all deadlines are met.
• Liaising with foreign agents to file patent and trademark applications, responses, amendments, examination requests, and other prosecution related documentation in other countries, especially the United States and Europe.
• Drafting and preparing correspondence for clients, foreign agents and intellectual property offices, including emails, standard letters and memos, working with Word and Excel templates.
• Managing PATTSY database, ensuring data is entered, maintained, and required follow–up dates are noted.
• Managing electronic files for the IP group and ensuring they are current with all relevant documentation.
• Bringing forward and pulling files as necessary for Lawyers/Agent attention.
• Requisitioning new files, maintaining a record of all client files, related records and general files.
• Maintaining BF system to support effective deadline management.
• Providing general administrative and practice support to the Senior Partner, including assisting with the coordination, preparation, and management of matters in support of the practice.
• Managing the docket for the Senior Partner, including overseeing and reviewing deadlines for other lawyers on the team on behalf of the practice, to ensure all deadlines are met.
• Processing and tracking invoices, assisting with supplier setup, and liaising with the billing team on invoice related matters.
• Supporting the training of team members on IP practice procedures, internal systems and workflows.
• Liaising with patent and trademark offices regarding filings, official correspondence, and procedural matters.

Benefits

• Outstanding benefits from day one, including insurance premiums paid by the Firm and wellness and technology reimbursements.
• Competitive compensation, paid overtime and generous time off, including a day off to volunteer and a day off for your birthday.
• A commitment to professional development and growth opportunities for our people at all levels, supported by a culture that fully embraces and encourages two-way feedback.
• Strong community involvement and a commitment to equity, diversity and inclusion.
• A collaborative, cohesive culture that connects lawyers and business teams through collective purpose.

What This Job Offers

• Job Type: Full-time
• Career Level: Mid Level
• Education Level: Associate degree
• Number of Employees: 501-1,000 employees