Intellectual Property Law Clerk

2 weeks ago

Toronto, Canada Compunnel Inc. Full time

Requisition Title: Paralegal III

Location: Toronto, ON

Job Summary:

The broad role of the Intellectual Property Law Clerk is to assist Global Corporate Legal Affairs to achieve its mandate of supporting intellectual property by managing legal issues that affect Client as a whole. The Intellectual Property Law Clerk will assist the Head of Global Intellectual Property with managing and maintaining the portfolio. Other duties include drafting, registering/renewing trademarks, research and general administrative or clerical duties. The role will deal with confidential and time sensitive information.

Key accountabilities include:

Serve as the go-to on all intellectual property related matters and act as manager of the intellectual property portfolio under the supervision of the Head of Global Intellectual Property in charge of the intellectual property portfolio.

Draft correspondence, agreements, trademark license agreements, renewal documentation and other trademark related documentation.

Ensure timely filings with the relevant trademark registry offices (with assistance of external trademark agent)

Conduct trademark searches (English and French).

Perform certain defined administrative and legal research tasks for Head of Global Intellectual Property.

Work closely with other law clerks in other jurisdictions.

Creation and adherence to new policies and procedures on Intellectual Property.

Assistance with opposition files, including preparation of cease and desist letters and co-existence agreements.

Assistance with copyright matters, domain names and patents, as required.

Job Requirements (Knowledge/Skills/Competencies):

Strong attention to detail

Strong relationship management skills

Strong research and problem-solving skills

Strong team player and ability to collaborate effectively across multiple business lines

Analytical and conceptual thinking skills

Effective communicator (written and verbal) skills with a positive attitude

Problem solver ability to take initiative when required

Self-starter ability to work independently with minimal supervision

Well organized

Demonstrated ability to work collaboratively in a fast-paced, results oriented, multiple team environment where confidentiality is essential

Ability to prioritize workload and manage time effectively

Professionalism

EDUCATION

Law Clerk/Paralegal designation from a recognized institution

WORK EXPERIENCE

3+ years of relevant intellectual property law clerk experience at a law firm or large financial institution (5-10 years preferred)

Experience in trademark law, copyright law, at a firm or in-house legal department.

Ability to produce high quality work while working under strict timelines

Must possess a general working knowledge of Microsoft Office

Working knowledge of PowerPoint and Sharepoint would be an asset

Key Problems/Challenges:

Ensuring trademark registrations do not lapse and are properly registered

Multi-tasking and collaborating broadly across various business segments on a variety of tasks on an ad hoc basis

Balancing competing priorities.

Managing expectations. Sometimes need to influence and negotiate timelines with internal business partners.

Scope (Dimensions & Organizational Impact):

As an individual contributor this role has the freedom to act within defined guidelines and processes/practices.

Brief Overview:

Leave Coverage.

Assisting with intellectual property portfolios. That includes all of the trademarks, we have 1200 across the globe. Do have some copyright patents as well, but less than 100. Will be doing some work with the domain names as well.

The majority of the work is working with the trademark filings and applications. Helping with new searches of filings, new trademark applications, the annual renewals, and will work closely with Global external trademark agents. We have a law firm who handles our portfolio for us. They will liaise with the lawyers at the law firm as well.

Top 3 Skills:

  • In-house or law firm exp
  • IP Exp (intellectual property)
  • Law Clerk or Paralegal.

Experience:

  • North America or Canada experience only.
  • Canada highly preferable.

Need to be:

  • Law clerk, Paralegal or Lawyer.

REQURIED:

  • 3+ years of relevant intellectual property law clerk experience at a law firm or large financial institution
  • Experience in trademark law, copyright law, at a firm or in-house legal department.
  • Law Clerk/Paralegal designation from a recognized institution.

PREFERRED:

5-10 years of relevant intellectual property law clerk experience at a law firm or large financial institution.

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