Patent Law Clerk

Reference # PLC_-_09-08-17
Open Date September 8, 2017
Close Date November 24, 2017
Location Ottawa

Purpose of Role

The Patent Law Clerk's primary purpose is to work as a contributing member of the Patent Law Clerk team to support the IP Group's patent practice. The Patent Law Clerk supports team members with workflow, maintains client service standards, assists with training and shares knowledge, and provides back-up during team absences.

Key Responsibilities

Everyone at BLG is required to carry out the duties of their role while upholding the important principles of our Respectful Workplace Policy, and treating everyone with respect, regardless of position.

The key responsibilities of this role include p rocessing a variety of complex law clerk tasks related to US, Foreign, PCT and Canadian Patent Prosecution from filing to issuance. The primary responsibilities of this role may include:

  • Monitoring the due list for all patent deadlines and sending appropriate reminders.
  • Reviewing, checking, docketing and reporting official correspondence from foreign Patent Offices and Foreign associates
  • Opening, preparing, filing and reporting of US direct, PCT International and Canadian patent applications
  • Preparing and filing US, PCT and Canadian responses and other documents with the USPTO and WIPO
  • Interacting with the CIPO, USPTO and other foreign patent offices (e.g., WIPO) with respect to administrative matters, and corresponding with foreign associates to facilitate ongoing prosecution of patent applications.
  • Proofreading patent applications, amendments, and other documents
  • Coordinating formality documents for national phase applications
  • Preparing and filing Information Disclosure Statements
  • Reviewing, checking and reporting official correspondence from various Patent Offices (e.g. Publication Notices, Notices of Allowance, Letters Patent, etc.)
  • Preparing and filing formal documents such as Assignments, Declarations, etc.
  • Providing status requests and cost estimates, as required.
  • Monitoring status of matters and contacting Patent Offices and Foreign associates, as required.
  • Processing transfers of matters to and from BLG.
  • Keeping up to date on changes in patent law, including internal procedural requirements

The secondary responsibilities of this role include:

  • Supporting team members with workflow, maintaining appropriate turn-around times, and backing up during absences.
  • Maintaining internal procedure and precedent documents.
  • Monitoring and processing updates and changes to procedures.
  • Assisting with and/or providing training in patent procedures.
  • Assisting with other related projects, as assigned.

Key Competencies Required

  • A minimum of 7 years of relevant patent experience with recent experience and advanced knowledge in US, Foreign, and/or Canadian filing and prosecution
  • A combination of law firm and in-house experience would be considered a strong asset
  • Exceptional computer skills, particularly with Windows-based computer systems including Adobe, Microsoft Word, Outlook and Excel
  • Excellent written and verbal communication skills in English
  • Strong organizational skills in planning and prioritizing work and an ability to multi-task
  • Ability to pay close attention to detail; demonstrate accuracy and thoroughness
  • Strong interpersonal skills and initiative; ability to work independently with minimum supervision and as a member of a multi-disciplinary team
  • Flexibility and adaptability for working with changing priorities and deadlines

Application

If you have an interest in this position or know of someone who may be suitable, please forward a current resume to Devon Prelaz, Human Resources Manager, at DPrelaz@blg.com by Friday, November 24, 2017.

We thank all applicants for their interest in this position, however, only applicants selected for an interview will be contacted.

Everyone at BLG is required to carry out the duties of their role while upholding the important principles of our respectful workplace policies, and treating everyone with respect, regardless of position. At BLG, valuing diversity and inclusion is key to a respectful workplace.

BLG is committed to fostering a diverse and inclusive workplace. We welcome and encourage applications from diverse candidates, including people with disabilities. Accommodations are available on request for candidates taking part in all aspects of the selection process.

* Please note that relatives of current BLG employees and Partners are not eligible for consideration.

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