Practice Assistant, Intellectual Property
Full time @Borden Ladner Gervais LLP posted 5 hours ago in Customer Service & Support Shortlist Email JobJob Detail
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Job ID 21737
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Experience Less Than 1 Year
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Qualifications Diploma
Job Description
“Full job description
We are BLG: Canada’s Law Firm. Our culture is one of vigilance and curiosity, Firm-wide collaboration, unfailing mutual respect and dedication. We pride ourselves on having standout talent and delivering an exceptional client experience.
We are a future-minded Firm delivering high-value advice and known for our unwavering commitment to innovation, diversity and inclusion, community involvement and talent development. Learn more about us at
www.blg.com
.
Purpose of Role
The Practice Assistant will act as workflow coordinator for other support services including delegating and reviewing the completion of document production, file management, copying/scanning work and other administrative work. The Practice Assistant will take an active interest in, and obtain a thorough understanding of, all aspects of client requirements to provide exceptional service levels to our lawyers and our clients. This role is responsible for the administration of all stages of patent and trademark applications from filing to issuance.
Key Responsibilities:
Administrative
Managing due/task lists and prioritizing deadlines
Providing Agent updates on deadlines and work status
Sending reminders to all relevant parties
Managing emails (incoming correspondence, flagging/tracking urgent items, conditional formatting to assist with inbox management)
Entering contacts into CRM database and running reports as requested
Working with internal Billing Clerks to ensure smooth billing process
Communication
Delegating workflow to Clerks and AAs as needed
Receiving and interpreting instructions from the Agent and providing all relevant information to move a file forward
Collaborating with Canadian and foreign paralegal groups
Communicating with clients and ensuring that all client or file-specific instructions are properly noted
Contentious Matters
Organizing document production and evidence
Organizing and maintaining litigation files (including Federal Court proceedings) and other IP dispute files (such as disputes before arbitrators or administrative tribunals including the Trademarks Opposition Board)
Preparing charts, chronologies and summaries of evidence for discoveries, cross-examinations, hearings or trial
Preparing mediation and pre-trial briefs
Preparing books of authorities
Trial or hearing preparation
Patent and Trademark Prosecution Matters
Assisting with the preparation, filing, prosecution, and reporting of Canadian and US patent applications and PCT applications
Assisting with the preparation, filing, prosecution, and reporting of Canadian trademark applications, and the preparation of letters instructing the filing of trademark applications in the U.S. and other jurisdictions
The maintenance of trademark and patent prosecution files, and the preparation of client status reports
Managing due dates for assigned professional(s) and follow up with clients when needed
Monitoring the due list for all patent and trademark related deadlines and sending appropriate reminders
Reviewing, checking, docketing and reporting official correspondence from PTMO Offices and Foreign associates
Interacting with CIPO, the USPTO and other foreign PTMO offices (e.g., WIPO) with respect to administrative matters
Drafting letters to foreign agents providing instructions for prosecution of foreign applications
Preparing and filing formal documents such as Assignments, Declarations, etc.
Assist with preparation of correspondence in oppositions, summary cancellation proceedings, and disputes
Attending to payment of various government fees
Providing status requests and cost estimates, as required
The IP Legal Assistant works closely with the Agents/Lawyers and may be asked to provide back-up to other team members and assist with other related duties, as required.
Required Competencies:
Legal Administrative Assistant diploma
Minimum of 1 year of experience as a Patent Assistant and experience working with Trademarks is preferred
Experience using an IP docketing and practice management system
Experience submitting office action responses, volunteer amendments and filing applications with Canadian and USA PTO
Proficiency in MS Office (specifically, MS Word and PowerPoint)
Experience with Visio an asset “
Required skills
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