Trademark Prosecution Administrator

Location

Toronto, ON | Canada

Job description

Osler, Hoskin & Harcourt LLP is one of Canada’s leading business law firms. Advising many of Canada’s corporate leaders, as well as U.S. and international parties with extensive interest in Canada, our more than 1,000 firm members are based in offices in Toronto, Montréal, Ottawa, Vancouver, Calgary and New York.

Osler prides itself on attracting and maintaining some of the brightest talent in the legal arena. Our lawyers, students, management and staff have created a unique firm culture which nurtures mentoring and the exchange of ideas. Osler is a dynamic and exciting place to further your career or carve out a new path.

The incumbent will provide administrative support to legal assistants and legal professionals in the Intellectual Property department, in support of our Toronto office’s Trademark practice. This full-time position is open to candidates with an avid interest in Trademark Prosecution, including the legal and clerical steps and processes required to bring a trademark to registration. Candidates with experience working in Intellectual Property, specifically trademarks is an asset.

Major Responsibilities

• Opening of new Trademark and Opposition matters in our database (Inprotech)
• Entering filing information, deadlines, reminders and all critical and non-critical dates for tracking
• Daily management of the task deadlines in the database, including reconciling the deadlines as needed
• Generating deadline or portfolio reports from data in our file management system as requested
• Tracking and reconciling fee payments with the central Finance Department
• Reviewing and triaging incoming correspondence received from the Canadian Intellectual Property Office for accuracy, which includes acknowledgements of filings, approval notices for advertisement, advertisements, registration certifications, applications to extend, etc.
• Reviewing and processing Foreign trademark correspondence as received from Foreign Associates
• Responsible for maintaining the information contained in our database, including updating of client information, contacts, reference numbers, ownership
• Reviews weekly Trademarks Office Journal for trademark advertisements relevant to the Trademark department’s clients
• Reporting of routine correspondence to clients using standard templates
• Ensures electronic files are closed on a regular basis
• Implements renewal procedures for trademarks which involves ensuring mailing addresses are correct, generating renewal reminders for clients, and maintaining renewal records in the departmental database
• Provides support to legal professionals, and legal assistants by assisting with administrative workflow and deadline tracking
• Handles confidential materials and documents
• Performs other duties are required

Position Requirements

Education and Experience

The position requires a college diploma as well as a minimum of 3 years’ experience working in the Intellectual Property industry. An equivalent combination of education, training and experience is acceptable.

Knowledge and Skills

• Strong knowledge of Microsoft Office and computer applications
• Ability to learn new systems and adjust to changes in workflow
• Knowledge of legal procedures, statutes, and regulations relating to Trademark practices (including Madrid Protocol, Opposition and Section (45) proceedings)
• Ability to work quickly, accurately, independently, and takes initiative
• Ability to remain calm when dealing with daily deadlines and situations requiring tact and flexibility
• Organizational skills required to handle a large volume of materials and expedite flow of work
• Strong verbal communication and interpersonal skills to deal with a variety of internal and external stakeholders
• Strong written communication skills

For the safety of firm members and visitors, Osler is committed to complying with the recommendations of public health authorities, including with respect to adopting mandatory vaccination policies. Employment at Osler is therefore conditional on complying with any vaccination policies that Osler may adopt from time to time in response to the recommendations of public health authorities.

We are currently working in a hybrid work arrangement, which includes a requirement to work partially in the office.

Accessibility and Accommodation

We thank all applicants for their interest in Osler; however, only chosen applicants will be contacted. Osler is committed to fostering a diverse and inclusive work environment, and we welcome and encourage applications from people with disabilities and people with diverse backgrounds, identities, and cultures. Accommodations are available upon request for candidates in all phases of the selection process.

Background and Reference Checks

Please note that any offer of employment will be conditional upon background and reference checks, including a criminal record check, credit check, and employment and educational verifications.

If you have the required background with the ability to provide exceptional customer service and wish to work in one of Canada's leading law firms, please reply in confidence with a cover letter and résumé by the closing date.

No agencies or phone calls/emails please.

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Job tags

Salary