Trademark Prosecution Administrator

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, Montreal, 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 exiting 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 trademark practice. This full-time position is open to candidates with experience in trademark prosecution, including the legal and clerical steps and processes required to bring a trademark to registration. Candidates with at least 3 years’ experience working in Intellectual Property, specifically trademarks, would be preferred.

• Opening of trademark matters in our database (Inprotech), including Opposition and Section 45 matters
• Responsible for maintaining the information contained in our database, including updating client information, contacts, reference numbers, and ownership
• Reviewing, triaging and processing Canadian and Foreign trademark correspondence as received from the Canadian Trademark Office and Foreign Associates, including entering and reconciling deadlines in database
• Management of renewal task deadlines in the database, including reconciling the deadlines as needed
• Generating renewal reminders for clients, and maintaining renewal records in the departmental database, preparation of Nice Classification and payment of renewals
• Provides support to legal professionals, and legal assistants by assisting with administrative workflow and deadline tracking
• Generating deadline or portfolio reports from data in our file management system as requested
• Reporting routine correspondence to clients using standard templates
• Creation of skeleton letters and proposed amendments, for review by Trademark agents
• Submission of final approved trademark correspondence using the CIPO online Trademark filing system, including Opposition and Section 45 correspondence
• Reconciliation and validation of government fees with Accounting team
• Ensuring tariff entries are made in our billing system (Intapp time entry)
• Ensures electronic files are closed on a regular basis``` (fixed a markup error, preserve line)"Handles confidential materials and documents
• Performs other duties as required

Education and Experience

The position requires a college diploma as well as a minimum of 3 years’ experience working in the Intellectual Property, preferably trademarks. 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
• Ability to work quickly, accurately, independently, and takes initiative
• Ability to remain calm when dealing with daily deadlines and situations requiring tact and flexibility
• Exceptional 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

The typical hiring salary range for this position in British Columbia is $65,000 - $85,000 annually; the base pay offered may vary depending on job-related knowledge, skills, experience, internal and market equity.

For the safety of firm…