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Patent Engineer

2 months ago

Toronto, Ontario, Canada PCK Intellectual Property Full time

About Us
PCK Intellectual Property is a boutique professional services firm that specializes in preparing patents and trademarks for leading technology companies across the globe. Our team of patent and trademark agents with degrees in engineering, science, mathematics, and physics protects innovations across a range of technologies, including software, telecommunications, chemistry, and biology. We value diversity and are committed to providing equal opportunities in employment, fostering a diverse and inclusive workplace, and providing a workplace free from discrimination and harassment. We welcome applications from equity-deserving groups, including Indigenous, Black, other people of color, persons with disabilities, women, and members of LGBTQIA2S+ communities. We balance professional excellence with a friendly working environment, where staff know they are appreciated, and their well-being and happiness are of paramount importance to the PCK family.

The Opportunity
We are seeking a Patent Engineer who is passionate about making meaningful contributions to our team. As a Patent Engineer, you will be responsible for assisting with finalizing drafted patent applications, including proofreading drafts, assisting with formalization details, and preparing responses to office actions. You will also perform patentability searches, landscape searches, freedom-to-operate searches, and prepare patentability opinions. Additionally, you will maintain and oversee patent files via electronic docketing systems and manage multiple priorities to ensure important deadlines are met.

Key Responsibilities
• Assist with finalizing drafted patent applications, including proofreading drafts and assisting with formalization details
• Prepare responses to office actions, including conducting additional legal and procedural research, amending claims, addressing objections, and responding to restriction requirements/unity objections
• Perform patentability searches, landscape searches, and freedom-to-operate searches
• Prepare patentability opinions
• Maintain and oversee patent files via electronic docketing systems
• Manage multiple priorities to ensure important deadlines are met
• Perform other tasks as assigned by the team

Requirements
• Technical background in a field such as engineering, computer science, or life sciences to understand and analyze complex inventions across different industries
• Legal research skills, including proficiency in conducting comprehensive patent searches, prior art searches, and freedom-to-operate analyses using various databases and resources
• Analytical thinking, with the ability to analyze and evaluate patentability, infringement, and validity opinions, and provide strategic advice to internal stakeholders
• Excellent communication skills, with the ability to draft clear and concise responses to office actions and communicate complex technical concepts to diverse audiences
• Attention to detail, with meticulous attention to detail in reviewing and editing patent documents to ensure accuracy and compliance with legal requirements
• Time management skills, with the ability to manage multiple patent applications simultaneously, prioritize tasks effectively, and meet tight deadlines in a fast-paced environment
• Familiarity with patent databases and tools, including proficiency in using patent databases such as WIPO, USPTO, EPO, and patent management software for document management and workflow optimization