Trademark Prosecution Administrator

Osler, Hoskin & Harcourt LLP; Vancouver; Hybrid; CAD 65,000 - 85,000; Full time

Job summary

Osler, Hoskin & Harcourt LLP in British Columbia seeks an administrative assistant to support the Intellectual Property group, focusing on trademark prosecution. The role requires a college diploma and at least 3 years' IP experience, preferably trademarks.

You will open trademark matters in Inprotech, manage deadlines, renewals, client records, and prepare correspondence for filing with the Canadian Intellectual Property Office, while handling confidential materials and collaborating with legal

Qualifications

• College diploma required.
• Minimum of 3 years’ experience in Intellectual Property, preferably trademarks.

Responsibilities

• Open trademark matters in Inprotech, including Opposition and Section 45 matters.
• Maintain and update client information, contacts, reference numbers, and ownership in the database.
• Process Canadian and Foreign trademark correspondence from CIPO and foreign associates; enter and reconcile deadlines.
• Manage renewal deadlines and maintain renewal records in the departmental database; prepare Nice Classification and pay renewals.
• Provide support to legal professionals and assistants; assist with workflow and deadline tracking.
• Generate deadline or portfolio reports from the file management system as requested.
• Prepare routine client correspondence using standard templates; create skeleton letters and amendments for review.
• Submit final trademark correspondence via the CIPO online filing system; handle Opposition and Section 45 filings.
• Reconcile government fees with Accounting; ensure tariff entries in Intapp time entry.
• Handle confidential materials and documents; perform other duties as required.

Tools

Inprotech

Intapp time entry

CIPO filing system

Job description

Osler, Hoskin & Harcourt LLP is one of Canada’s leading business law firms. Advising many of Canada’s corporate leaders, as well as U.S. and international parties with extensive interest in Canada, our more than 1,000 firm members are based in offices in Toronto, Montreal, Ottawa, Vancouver, Calgary and New York.

Osler prides itself on attracting and maintaining some of the brightest talent in the legal arena. Our lawyers, students, management and staff have created a unique firm culture which nurtures mentoring and the exchange of ideas. Osler is a dynamic and exiting place to further your career or carve out a new path.

The incumbent will provide administrative support to legal assistants and legal professionals in the Intellectual Property department, in support of our trademark practice. This full-time position is open to candidates with experience in trademark prosecution, including the legal and clerical steps and processes required to bring a trademark to registration. Candidates with at least 3 years’ experience working in Intellectual Property, specifically trademarks, would be preferred.

Major Responsibilities

• Opening of trademark matters in our database (Inprotech), including Opposition and Section 45 matters
• Responsible for maintaining the information contained in our database, including updating client information, contacts, reference numbers, and ownership
• Reviewing, triaging and processing Canadian and Foreign trademark correspondence as received from the Canadian Trademark Office and Foreign Associates, including entering and reconciling deadlines in database
• Management of renewal task deadlines in the database, including reconciling the deadlines as needed
• Generating renewal reminders for clients, and maintaining renewal records in the departmental database, preparation of Nice Classification and payment of renewals
• Provides support to legal professionals, and legal assistants by assisting with administrative workflow and deadline tracking
• Generating deadline or portfolio reports from data in our file management system as requested
• Reporting routine correspondence to clients using standard templates
• Creation of skeleton letters and proposed amendments, for review by Trademark agents
• Submission of final approved trademark correspondence using the CIPO online Trademark filing system, including Opposition and Section 45 correspondence
• Reconciliation and validation of government fees with Accounting team
• Ensuring tariff entries are made in our billing system (Intapp time entry)
• Ensures electronic files are closed on a regular basis``` (fixed a markup error, preserve line)"Handles confidential materials and documents
• Performs other duties as required

Position Requirements

Education and Experience

The position requires a college diploma as well as a minimum of 3 years’ experience working in the Intellectual Property, preferably trademarks. An equivalent combination of education, training and experience is acceptable.

Knowledge and Skills

• Strong knowledge of Microsoft Office and computer applications
• Ability to learn new systems and adjust to changes in workflow
• Ability to work quickly, accurately, independently, and takes initiative
• Ability to remain calm when dealing with daily deadlines and situations requiring tact and flexibility
• Exceptional organizational skills required to handle a large volume of materials and expedite flow of work
• Strong verbal communication and interpersonal skills to deal with a variety of internal and external stakeholders

Compensation:

Thetypical hiring salary range for this position in British Columbia is $65,000 - $85,000 annually; the base pay offered may vary depending on job-related knowledge, skills, experience, internal and market equity.

For the safety of firm members and visitors, Osler is committed to complying with the recommendations of public health authorities, including with respect to adopting mandatory vaccination policies. Employment at Osler is therefore conditional on complying with any vaccination policies that Osler may adopt from time to time in response to the recommendations of public health authorities.

We are currently working in a hybrid work arrangement, which includes a requirement to work primarily in the office and flexibility to work remotely up to 2 days per week.

Accessibility and Accommodation

We thank all applicants for their interest in Osler; however, only chosen applicants will be contacted. Osler is committed to fostering a diverse and inclusive work environment, and we welcome and encourage applications from people with disabilities and people with diverse backgrounds, identities, and cultures. Accommodations are available upon request for candidates in all phases of the selection process.

Background and Reference Checks

Please note that any offer of employment will be conditional upon background and reference checks, including a criminal record check, credit check, employment and educational verifications.

Please note that we use artificial intelligence to screen, assess or select applicants for this role.