Legal Assistant, Intellectual Property

Role Overview

• Documents Drafting, preparing, formatting, and revising all correspondence and submissions for Intellectual Property Offices in Canada, the US, and elsewhere, including the Canadian Patent Office and the Canadian Industrial Design Office (CIPO), the United States Patent and Trademark Office (USPTO), and WIPO, including office action responses.
• Filing submissions with CIPO, the USPTO, and WIPO via fax, courier, and online tools (e.g., CIPO’s Patent Portal, MyCIPO Patents, Patent Center, etc.), including generation of cover letters, fax cover sheets, and fee payment forms.
• Managing lawyer's prosecution practice, including delegating tasks to appropriate IP team members, and following up with regards to status.
• Supporting lawyer’s regulatory practice, including conducting drug/patent searches, drafting PM(NOC)-related documents, and preparing letters addressed to Health Canada/OPML.
• Reviewing all Pattsy information including checking all docket entries, ensuring data is correctly entered and maintained, requesting changes and follow-up dates as needed, generating docket reports, and tracking all deadlines (official, internal, or client/external) and work progress in all active files to make sure due dates are met.
• Contacting Intellectual Property Offices, including CIPO and the USPTO, to resolve basic issues on files such as inquiries and status updates on applications or changes to paperwork and follow ups.
• Managing physical and electronic files for the IP group; ensuring they are current with all relevant documentation, submissions, and correspondence; bringing forward and pulling files as necessary for lawyer's attention.
• Requisitioning new files; maintaining a record of all client files and client data, including contact information.
• Coordinating daily practice of lawyer to ensure hard and soft deadlines are being addressed.
• Liaising with billing analyst on prebills and invoices including reviewing all prebills for inaccuracies and errors prior to lawyer review.
• Managing client billing information, including special billing instructions.
• Processing expense reports, outgoing fee payments, and incoming client payments.
• Providing consistent backup support when assistants are absent; providing support to assistants who may be managing multiple tasks and/or difficult deadlines; and working proactively as a positive and productive member of the team.
• Conducting searches for and downloading patents, trademarks, and designs, using foreign and domestic databases, as requested by the lawyer.
• Working in a team environment, which includes sharing information and knowledge with team and occasionally supporting other legal assistants and other legal staff.
• Performing a variety of routine tasks, as well as special projects.
• Performing other duties as required.

Requirements

• Legal Assistant diploma or equivalent.
• Minimum 5 years of experience as a Legal Assistant in an Intellectual Property group.
• Depth of legal understanding and knowledge of IP laws, with ability to self-update in view of ongoing changes to IP legislation and practice.
• Extreme attention to detail.
• Exceptional written and oral communication skills, with the ability to maintain a mutual comfort level while relating to clients, lawyers, and government agencies.
• Strong time management and prioritizing to meet important deadlines with effectiveness and efficiency.
• An energetic, proactive approach with a can-do attitude.
• Flexibility and adaptability in responding to changing laws and practices and constructive feedback; reliability and punctuality.
• Empathy, with a focus on delivering high-quality client service (both internal and external).
• A willingness to take on any task as needed to support the lawyer's practice.
• High level of discretion and confidentiality.
• Ability to work in both a team setting and as an independent under minimal supervision.
• Knowledge of Pattsy and iManage or comparable document management system.

Benefits

• Outstanding benefits from day one, including insurance premiums paid by the Firm and wellness and technology reimbursements.
• Comprehensive wellbeing support, including access to Dialogue for confidential mental health support, virtual healthcare assistance, and proactive wellness resources for you.
• Competitive compensation, paid overtime and generous time off, including a day off to volunteer and a day off for your birthday.
• Commitment to learning and growth, with ongoing professional development opportunities for people at all levels.
• Strong community involvement and a commitment to equity, diversity and inclusion.
• A supportive, collaborative culture that values contribution, accountability and shared success across legal and business teams.