Patent Counsel

TD•Toronto, ON

2d•CA$130,000 - CA$165,000•Onsite

About The Position

In this Counsel role you will provide legal advice and primarily support TD's growing patent portfolio, currently comprising over 1000 granted patents and 1500 pending applications. In this role, you will be part of a growing IP team within the Distribution, Innovation/IP and Customer Experience (DICE) Legal team located in Toronto. The role offers complex, engaging and meaningful work spanning various phases of the patent lifecycle, and the opportunity to work with and learn from seasoned legal practitioners and leaders from across the enterprise. The successful candidate needs to provide effective support in light of rapidly evolving technology and innovation, changes in intellectual property law, and respond to the dynamic environment in the business.

Requirements

A university degree in a technical field, such as engineering, computer science, or physics.
Candidates must be registered as a patent agent before the Canadian Intellectual Property Office, the United States Patent and Trademark Office, or both.
A law degree from an accredited law school and qualification to practice law in Canada is highly beneficial.
3+ years of experience practicing as a lawyer or a patent agent at a major law firm or in-house focusing on patent prosecution.
Versatile self-starter with demonstrated ability to take initiative and work independently as well as part of a team.
Superior analytical ability and written/verbal communication skills, both in legal and business settings
Ability to simplify, solve problems, multitask and work effectively against multiple deadlines with speed, agility, and attention to detail.
Independent thinker with excellent judgment who also has strong interpersonal skills and the ability to work effectively with multiple partners.
Comfortable working in ambiguity and a constantly changing, time-sensitive environment.
Willingness to learn and a natural curiosity for exploring a wide range of topics.
Ability to work effectively with external counsel.

Responsibilities

Support the process of identifying and harvesting patentable opportunities originating from anywhere within TD's vast technological footprint.
Assess new inventions for patentability and participate in committee meetings to decide which opportunities are worth progressing to the patent application stage.
Work with outside Counsel and TD's business partners to prepare and file patent applications in both the United States and Canada.
Work with outside Counsel and TD's business partners to manage ongoing patent prosecution in a prudent and cost-effective manner.
Support a variety of patent related initiatives, ranging from initiatives for more effective management and maintenance of TD's growing patent portfolio to supporting business driven initiatives relating to the value of the portfolio.
Assist with development of TD's patent strategy.
Support and assist with patent litigation and assessing and responding to patent infringement demand letters.
Advise business partners and the Legal Department on intellectual property aspects of corporate commercial agreements.
Be familiar and stay current with, as well as draft briefings and advise on, evolving laws and regulations governing patents and key developments in technology.
Help manage TD's significant patent budget.
Collaborate within the IP team to ensure effective delivery of advice and portfolio management related work, including collaborating with team members to manage and administer software used for IP portfolio management.
Contribute to colleague development within the Legal Department by discussing relevant legal issues or regulatory changes that arise in the context of the team's work or other areas you have experience with.
Contribute to high priority special projects and Legal Department.