Practice Assistant, Intellectual Property

BC Legal Management Association; Vancouver; On-site; CAD 53,000 - 73,000; Full time

Job summary

A leading law firm in Vancouver seeks a Practice Assistant to coordinate workflow and manage patent and trademark application processes. The role requires excellent communication and organizational skills, with a focus on delivering exceptional service to clients and lawyers. Candidates should have at least 1 year of relevant experience and proficiency in various legal software tools.

Benefits

Diverse workplace commitment

Accessible candidate experience

Qualifications

• Minimum of 1 year of experience as a Patent Assistant.
• Experience with Trademarks preferred.
• Familiarity with IP legal practices is highly valued.

Responsibilities

• Act as workflow coordinator for support services and manage document production.
• Organize and maintain litigation files and prepare various legal documents.
• Assist with patent and trademark prosecution matters.

Skills

Organizational Skills

Communication Skills

Attention to Detail

Proficiency in MS Office

Education

Minimum of 1 year of experience as a Patent Assistant

Tools

IP docketing and practice management system

MS Word

PowerPoint

Visio

Job description

We are BLG : Canada’s Law Firm. Our culture is one of vigilance and curiosity, Firm-wide collaboration, unfailing mutual respect and dedication. We pride ourselves on having standout talent and delivering an exceptional client experience.

We are a future-minded Firm delivering high-value advice and known for our unwavering commitment to innovation, diversity and inclusion, community involvement and talent development. Learn more about us at www.blg.com .

Purpose of Role

The Practice Assistant will act as workflow coordinator for other support services including delegating and reviewing the completion of document production, file management, copying / scanning work and other administrative work. The Practice Assistant will take an active interest in, and obtain a thorough understanding of, all aspects of client requirements to provide exceptional service levels to our lawyers and our clients. This role is responsible for the administration of all stages of patent and trademark applications from filing to issuance.

Key Responsibilities :

Administrative

• Managing due / task lists and prioritizing deadlines
• Providing Agent updates on deadlines and work status
• Sending reminders to all relevant parties
• Managing emails (incoming correspondence, flagging / tracking urgent items, conditional formatting to assist with inbox management)
• Entering contacts into CRM database and running reports as requested
• Working with internal Billing Clerks to ensure smooth billing process

Communication

• Delegating workflow to Clerks and AAs as needed
• Receiving and interpreting instructions from the Agent and providing all relevant information to move a file forward
• Collaborating with Canadian and foreign paralegal groups
• Communicating with clients and ensuring that all client or file-specific instructions are properly noted

Contentious Matters

• Organizing document production and evidence
• Organizing and maintaining litigation files (including Federal Court proceedings) and other IP dispute files (such as disputes before arbitrators or administrative tribunals including the Trademarks Opposition Board)
• Preparing charts, chronologies and summaries of evidence for discoveries, cross-examinations, hearings or trial
• Preparing mediation and pre-trial briefs
• Preparing books of authorities
• Trial or hearing preparation

Patent and Trademark Prosecution Matters

• Assisting with the preparation, filing, prosecution, and reporting of Canadian and US patent applications and PCT applications
• Assisting with the preparation, filing, prosecution, and reporting of Canadian trademark applications, and the preparation of letters instructing the filing of trademark applications in the U.S. and other jurisdictions
• The maintenance of trademark and patent prosecution files, and the preparation of client status reports
• Managing due dates for assigned professional(s) and follow up with clients when needed
• Monitoring the due list for all patent and trademark related deadlines and sending appropriate reminders
• Reviewing, checking, docketing and reporting official correspondence from PTMO Offices and Foreign associates
• Interacting with CIPO, the USPTO and other foreign PTMO offices (e.g., WIPO) with respect to administrative matters
• Drafting letters to foreign agentsproviding instructions for prosecution of foreign applications
• Preparing and filing formal documents such as Assignments, Declarations, etc.
• Assist with preparation of correspondence in oppositions, summary cancellation proceedings, and disputes
• Attending to payment of various government fees
• Providing status requests and cost estimates, as required
• The IP Legal Assistant works closely with the Agents / Lawyers and may be asked to provide back-up to other team members and assist with other related duties, as required.
• Minimum of 1 year of experience as a Patent Assistant and experience working with Trademarks is preferred
• Experience using an IP docketing and practice management system
• Experience submitting office action responses, volunteer amendments and filing applications with Canadian and USA PTO
• Proficiency in MS Office (specifically, MS Word and PowerPoint)
• Experience with Visio an asset

The expected salary range for this position is $53,000 - $73,000, depending on level of experience, region / location, and other factors.

If you have an interest in this position or know of someone who may be suitable for the role, please submit your CV using this link Careers to our website.

BLG is committed to building a diverse workplace reflective of the communities we serve and to fostering an inclusive culture where Firm members feel valued, respected and inspired to thrive as their authentic selves. We value diversity of thought and the unique skills, perspectives and experience each individual brings to BLG. We welcome applications from all qualified candidates and encourage applicants from members of groups that have been historically underrepresented, including but not limited to First Nations, Métis and Inuit Peoples, racialized individuals, persons with disabilities, people who identify as women and / or LGBTQ2S+.

We also strive to provide an accessible candidate experience. Please let us know if you need any accommodations during the recruitment process.

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