Intellectual Property Clerk

2 weeks ago

toronto, Canada PCK Intellectual Property Full time

ROLE:              Intellectual Property Clerk (Filing Clerk)

START DATE:   As soon as possible

LOCATION:     Hybrid (minimum 2-3 days per week in our Toronto office). Remote candidates may be considered, though hybrid arrangements are preferred.


A BIT ABOUT US

PCK Intellectual Property (“PCK”) is a leading boutique IP firm known for its exceptionally strong patent drafting practice, acting directly before the USPTO and WIPO. We work with clients across Canada, the U.S., and Europe, protecting innovations in software, telecommunications, medical devices, mechanical engineering, chemistry, and more. Our co-founders are authors of Canadian Patent Law (5th edition), a treatise cited by the Supreme Court of Canada, reflecting our thought leadership in IP law.


We value diversity, inclusion, and a positive, supportive workplace where our team thrives.


THE OPPORTUNITY

As PCK continues to grow, we are looking to add an Intellectual Property Clerk (Filing Clerk) who is passionate about making meaningful contributions. This is a newly created position, so flexibility will be essential as the role evolves to meet organizational needs. Responsibilities include but are not limited to:         

  • Canadian Filings: Prepare and file patent, industrial design, and trademark applications in Canada, opening files, ensuring all required forms, declarations, and supporting documents are completed accurately and on time. Ensure compliance with all relevant laws and regulations for IP filings. Update file, report, and bill the file once the application has been submitted.
  • Foreign Filings: Assist with the preparation and filing of patent, industrial design, and trademark applications directly with USPTO and WIPO, as needed, workload permitting. Assist with preparation of applications and communication with foreign counsel for filings in foreign jurisdictions, as needed, workload permitting.
  • Conflict Checks: Conduct conflict checks, as needed, for all new applications to ensure compliance with firm policies.
  • Cost Estimates: Provide cost estimates for all new patent, industrial design, and trademark filings, based on the latest CIPO and firm fees.
  • Name Records: Work in conjunction with the Docketing Clerk to maintain the Name Records database, creating and updating records as required.
  • Proofreading: Collaborate with the Support Team Manager to review and proofread publications and issued patents as needed.
  • Status Checks: Collaborate with the Support Team Manager to review status of Canadian Applications on the CIPO database, ensuring that our records are current and up to date.
  • File Transfers In & File Transfers Out: Assist with large file transfers, ensuring the accurate transfer of data, including deadlines, ownership details, and application history.
  • Backup Support: Provide backup support for the Docketing Clerk and Support Team Manager, as needed.
  • Handle all documents and information with strict confidentiality and maintain high ethical standards.
  • Any other tasks that may be assigned from time to time.

 

THE SKILL SET

  • Minimum of 3 years of experience in intellectual property, including filing applications with CIPO.
  • Trademark experience is an asset but not required; training will be provided.
  • Strong understanding of intellectual property laws and procedures is an advantage.
  • Meticulous attention to detail is essential.
  • Knowledge of IP terminology and procedures is preferred.
  • Enthusiasm and aptitude for leveraging advanced legal technology.
  • Proficiency in Microsoft Office and other relevant software.
  • Exceptional interpersonal, verbal, and written communication skills.
  • Strong organizational and prioritization skills to manage tasks efficiently.
  • Energy and capability to work in a fast-paced environment while handling pressure effectively.
  • Positive attitude, passion for success, flexibility, and adaptability to change.


PCK is committed to accessible employment practices that are in compliance with the Accessibility for Ontarians with Disabilities Act ('AODA'). If you require accommodation for a disability during any stage of the recruitment process, please notify us at hr@pckip.com.


We thank all applicants for their interest, however, only those selected for further consideration will be contacted.

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