Trademark Prosecution Administrator

BC Legal Management Association; Vancouver; On-site; CAD 65,000 - 85,000; Full time

Job summary

Osler, Hoskin & Harcourt LLP in Vancouver seeks an Administrative Support professional for the Intellectual Property department, focusing on trademark prosecution and related processes. This full-time role supports legal assistants and IP lawyers.

You will open trademark matters in Inprotech, track deadlines, reconcile fees, file with the CIPO system, and maintain client and ownership data. The position requires a college diploma and at least three years of IP experience; a hybrid work

Qualifications

• Minimum of 3 years of experience in Intellectual Property, preferably trademarks.
• College diploma required; equivalent combinations accepted.
• Experience with trademark prosecution processes is preferred.

Responsibilities

• Open trademark matters in Inprotech, including Opposition and Section 45.
• Maintain client information, contacts, reference numbers, and ownership in databases.
• Process Canadian and foreign trademark correspondence and track deadlines.
• Manage renewal deadlines and generate renewal reminders.
• Prepare Nice classifications and payment of renewals.
• Assist legal professionals and assistants with workflow and deadline tracking.
• Generate deadline or portfolio reports from the filing system.
• Correspondence to clients using standard templates.
• Create skeleton letters and amendments for review by Trademark agents.
• Submit final trademark correspondence using the CIPO filing system.
• Reconcile government fees with Accounting.
• Ensure tariff entries in Intapp time entry.
• Close electronic files regularly.
• Handle confidential materials.
• Perform other duties as required.

Skills

Microsoft Office

Learn new systems

Fast and accurate work

Independent work

Tact and flexibility

Organizational skills

Verbal communication

Written communication

Education

College diploma

Tools

Intapp time entry

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
• 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
• Strong written communication skills

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.