Gowlings is a leading Canadian law firm offering a diverse range of services within IP, business and advocacy law to help organizations achieve their business objectives. Gowlings has over 750 professionals across offices in Montréal, Ottawa, Toronto, Hamilton, Waterloo Region, Calgary, Vancouver, Beijing, London, U.K., and Moscow.
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 Examiner’s 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
If you are interested in this opportunity, please send your resume quoting the File No: 2013-02-11-PC via e-mail to the co-ordinates indicated below
Gowling Lafleur Henderson LLP
Barristers & Solicitors
1400, 700 - 2nd Street SW
Application Deadline: Open until suitable candidate is found.