Patent Prosecution Clerk (Foreign Prosecution)

Osler, Hoskin & Harcourt LLPOttawa, ON
CA$60,000 - CA$80,000Hybrid

About The Position

Osler, Hoskin & Harcourt LLP is seeking a Patent Prosecution Clerk to join their leading and growing Intellectual Property Department in their Ottawa office. This full-time position is open to candidates with prior knowledge and understanding of foreign patent workflow and processes, including U.S. patents and Patent Cooperation Treaty (PCT) International patents. The firm prides itself on attracting and maintaining bright talent and fostering a unique firm culture that nurtures mentoring and the exchange of ideas. This is an existing vacancy.

Requirements

  • Prior knowledge and understanding of foreign patent workflow and processes (including but not limited to U.S. patents, and Patent Cooperation Treaty (PCT) International patents)
  • At least 2-3 years of hands-on experience
  • Ability to obtain, clarify, present, and discuss information pertinent to assignment in a clear and concise manner
  • Proficient in Microsoft (Outlook, Word, Excel)
  • Accuracy of work product and excellent attention to detail
  • Strong communication, interpersonal, and client service skills
  • Ability to multi-task and prioritize
  • Advanced organizational skills
  • Ability to work independently
  • Teamwork skills to interact/collaborate with various group members; partnered with ability to take initiative and work independently
  • Ability to maintain absolute confidentiality of information

Nice To Haves

  • An undergraduate degree or diploma in business administration, law clerk or similar would be an asset.

Responsibilities

  • Maintain docketing, reminder, and bring-forward systems to track foreign patent prosecution deadlines and ensure timely follow-up by legal professionals
  • Open records, data entry and review in IP database (Inprotech)
  • File U.S. provisional and PCT International patent applications using their online filing platforms
  • Coordinate the filing of foreign patent applications through foreign associates
  • Communicate directly with U.S. Patent and Trademark Office (USPTO), World Intellectual Property Office (WIPO), and foreign associates on behalf of clients and legal professionals regarding status, maintenance and advancement of patent examination and prosecution
  • Draft correspondence, letters, and memos for review by a legal professional
  • Communicate directly with clients such as reporting routine matters
  • Administering formality requirements
  • Coordinate and track the approval and payment of foreign associate invoices
  • Facilitate the entering of tariffs and government fees into our billing system
  • Review of pre-bills, including routing of pre-bills to legal professionals for approval
  • Perform other duties as assigned

Benefits

  • Accommodations are available upon request for candidates in all phases of the selection process.
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