Foreign Trademark Clerk

2 weeks ago

Ottawa, 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 an IP Administrator to join our Trademark group. In this role you will perform a variety of foreign trademark prosecution tasks and administrative duties in support of our national trademark practice.
Responsibilities.
- Draft and send filing instructions to foreign associates, ensuring all necessary information for submissions
- Instruct foreign associates on responses to examiner's reports, Notices of Allowance, proof of use requirements, and registration certificates
- Review filing notices, examiner's reports, approval notices, advertisements, and registration certificates for accuracy
- Report discrepancies and ensure timely responses to deadlines by coordinating with foreign associates and obtaining client instructions
- Oversee responses to proof of use requirements, including reviewing specimens and coordinating with clients to gather evidence or affidavits
- Monitor and report renewal due dates, instructing foreign associates to process renewal payments
- Arrange for the translation, apostille/authentication, and legalization of documents through foreign consulates as required
- Other duties may be assigned or amended as required

Qualifications, competencies and experience.
- Office Administration, Legal Assistant or Paralegal diploma, or relevant combination of education and work experience
- 3+ years of relevant Trademark experience in an office or law firm environment
- Excellent interpersonal and communication skills, including the ability to deal directly with clients
- Excellent attention to detail, and is highly organized and proactive
- Experience using MS Office and has the ability to learn new software quickly
- Ability to manage multiple priorities and work in a fast-paced and ever-changing work environment

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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