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Intellectual Property Patent Specialist

2 months ago

Ottawa, Ontario, Canada Marks & Clerk Full time

Shape the landscape of intellectual property

Marks & Clerk stands as a prominent name in the realm of intellectual property, with a legacy dating back to 1921. Our Canadian office is equipped with a proficient team of patent and trademark professionals, providing comprehensive expertise across various facets of intellectual property – including patents, trademarks, designs, and copyright. We offer strategic and commercial insights on portfolio management, licensing, enforcement, litigation, and the valuation of intellectual property.

With a robust network of 15 offices spanning Canada, the UK (across eight cities), Europe, and Asia, Marks & Clerk has cultivated enduring partnerships with trusted IP firms globally. This enables us to effectively secure IP protection for clients aiming to safeguard their innovations across multiple jurisdictions. Our clientele encompasses a wide array of industries, from start-ups and SMEs to large multinational corporations, all of whom rely on our commitment to delivering high-quality, seamless, and cost-effective services, both locally and internationally.

We are seeking a seasoned Patent Agent to enhance our Ottawa team, focusing on patent drafting, filing, and prosecution.

Key Responsibilities

At Marks & Clerk, we adopt a holistic view of business portfolios from an IP standpoint and prioritize collaboration with our clients. The specific responsibilities include:

  • Identifying and safeguarding patentable inventions.
  • Providing clients with guidance on securing suitable IP protection and managing the preparation and submission of patent applications.
  • Conducting IP audits and due diligence for investors in intellectual property and businesses with IP assets.
  • Coordinating validity and infringement assessments along with patent monitoring services.
  • Managing the prosecution of patent applications until grant.
  • Crafting arguments to support clients' positions, referencing relevant case law.

Required Qualifications and Experience

  • Must be a qualified Canadian Patent Agent with a minimum of two years of post-qualification experience.
  • Hold a recognized degree in science, chemistry, biochemistry, and/or biology.
  • Proficient in patent drafting, filing, and prosecution.
  • Demonstrated technical excellence.
  • Capable of managing client relationships effectively.
  • Ability to work efficiently, both independently and collaboratively.
  • Highly motivated with a proactive approach to developing the practice.
  • Excellent skills in time and portfolio management.