Patent Clerk

3 months ago

Toronto, Canada Smart & Biggar Full time

What We Do.
Smart & Biggar has been at the forefront of IP and technology law for over 100 years. We practice in every area of IP on behalf of an exceptional international clientele, and we are consistently ranked as Canada’s leading IP firm. We are committed to hiring people with different backgrounds and experience, who represent the best talent in their field.
We are part of the IPH Group. IPH Limited is the holding company for intellectual property and associated companies offering a wide range of IP services and products. IPH companies employ a highly skilled multidisciplinary team of over 1,200 people in Australia, Canada, China, Hong Kong SAR, Indonesia, Malaysia, New Zealand, Singapore and Thailand. IPH companies service a diverse client base of Fortune Global 500 companies, multinationals, public sector research organizations, SMEs and professional services firms worldwide.
We are passionate about what we do and what we can achieve. The IPH Group is committed to promoting and maintaining a workplace culture of shared respect across companies to enable us all to feel valued and be the best we can be.
The Opportunity.
We are currently looking for a Patent Clerk to join our national patnet team in Toronto. In this role you will be part of our administrative team providing operational support to our patent agents and lawyers.
This role requires an excellent multi-tasker with strong administrative and communication skills, and the ability to work in a fast-paced environment.
Responsibilities.
- Review and report on prosecution documents (e.g., examination requests, notices of allowance) to clients, and prepare Office Action responses based on client instructions and professional guidance
- Prepare and file prior art submissions with the US and Canadian Patent Offices.
- Draft and send reminders to clients for needed instructions and maintain strong communication to ensure client satisfaction.
- Handle clerical functions, e-file management, and administrative tasks including opening/closing client files, billing, and maintaining accurate client contact information.
- Draft correspondence for professional approval, utilizing established precedents
- Other duties may be assigned or amended as required

Qualifications and experience.
- 2-4 years of experience in a legal or professional services environment
- Experience with US and Canadian Patent Office electronic filing systems
- Excellent interpersonal and communication skills, including the ability to deal directly with clients and all levels of staff
- Excellent attention to detail, highly organized, ability to handle multiple priorities in a fast-paced environment and proactive
- Highly proficient in MS Office and ability to learn new software and technology quickly

LI-HYBRID
Smart & Biggar offers a comprehensive total rewards package including:

- A competitive compensation structure based on transparency, clarity and fairness;
- A flexible benefits program;
- Personal days to help balance personal and professional commitments;
- Employee referral program.

Smart & Biggar is a proud member of the Law Firm Diversity and Inclusion Network (LFDIN), working to promote diversity and encourage a culture of inclusion in our Firm and the broader legal profession.

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