Work in Tech

ABOUT GOWLING WLG

At Gowling WLG, our dedication to excellence and quality service begins with our people. As a global law firm with offices across Canada, the U.K., Europe, the Middle East and Asia, we pride ourselves on sourcing and retaining top talent who bring energy, passion and commitment to the delivery of outstanding client service.

When it comes to diversity, we not only accept it — we celebrate it, support it and thrive on it. To create an engaging and rewarding place to work, we seek to attract talented people from a diverse range of backgrounds and cultures. Our aim is to help everyone reach their full potential and achieve their personal and professional goals.

Employee satisfaction is important to us. We work hard to ensure that our people are motivated, engaged and empowered. Our diverse group of legal professionals, law students, law clerks/paralegals, legal administrative assistants and business support staff work together as a team, and are respected and valued for their individual contributions.

PROFILE

We are currently recruiting for a senior level IP Patent Coordinator to join our fast-paced team. Responsible for coordinating and executing various tasks and activities involved in the worldwide prosecution of domestic and foreign patents for a team of patent professionals and to provide support to the team as required to maximize the efficiency and performance of the practice. This position receives some direction and guidance; however, most tasks and objectives are accomplished independently

RESPONSIBILITIES

Responsibilities may include and are not limited to the following:

• Working closely with Partners, Professionals and Legal Administrative Assistants to coordinate and execute various tasks for diverse patent practices and clients in various areas and industries.
• Reviewing and approving new patent applications for filing in the Canadian Intellectual Property Office (CIPO) the United States Patent Office (USPTO), and other foreign jurisdictions. Responsibilities may include, amongst other things, ensuring that patent abstracts, specifications, claims and drawings are in accordance with various jurisdictional requirements; reviewing formal documents for accuracy and consistency with other materials received from clients in conjunction with the IP support team (e.g. reviewing initial draft of filing documents); reviewing and preparing, if necessary, formal documents such as Assignments, Petitions, Powers of Attorneys, Declarations, and the like, for filing in Canada, the US and other foreign jurisdictions; preparing reporting letters to clients respecting the filing of applications; and scheduling and controlling workflow to meet specific deadlines for filing and submission of documents post-filing.
• For US prosecution: attend to the preparation and filing all necessary paperwork for filing of US applications with USPTO for agent review; representative US prosecution actions with agent review may include: preparing information disclosure statements (IDS); reviewing USPTO correspondences and reporting same; reviewing and reporting US publications; reporting US Office Actions with agent review; attending to filing of US Office Action responses with agent review, filing of RCEs, continuation/divisional applications, interview request forms, and other prosecution tasks, etc. as well as monitoring related deadlines and correspondences.
• Screening and reviewing incoming correspondence post-filing for Canadian, US and foreign applications and forwarding to the appropriate person, group and / or client for immediate attention and action. Representative actions may include support for reporting letters of Examiner’s Reports and Office Letters from CIPO, USPTO and foreign associates and drafting and filing other submissions, clerical support for preparing draft office action responses and claim amendments; Requests for Examination/Advanced Examination; Requests for Continued Examination, Preliminary/Voluntary Amendments with agent review; Payments of Final Fee; Reviewing and forwarding Notice of Allowances with agent review and Letters Patent documents to clients.
• Reviewing and monitoring daily diaries and due case reports and initiating appropriate action where necessary including sending reminders to professionals and/or clients to keep them abreast of impending deadlines.
• Managing multiple deadlines, communicating with others and ensuring important deadlines are met.
• Docketing of work on the Firm’s accounting system.
• Other duties as required.

QUALIFICATIONS

• Law Clerk, Administrative Assistant or Legal Administrative Diploma or other relevant post-secondary education.
• Minimum of eight years of related experience in IP law.
• Ability to communicate clearly, effectively and professionally with team members, other Firm members, clients, foreign associates, CIPO and other Intellectual Property Offices.
• Able to take ownership and responsibility for tasks and work independently, as well in a team environment with and for multiple team members with diverse practices.
• Able to produce a high quality and quantity of work product often under tight timelines and under strict deadlines.
• Ability to effectively monitor, manage, prioritize (and re-prioritize) workflow and deadlines for multiple professionals.
• Displays a professional, client-service attitude.
• Knowledge of both Canadian, US, International and other foreign Patent practices (US, EP, PCT and others).
• Knowledge of Intellectual Property in-house databases.
• Knowledge of Microsoft Office Suite.

Gowling WLG employees benefit from a hybrid work environment.

Not sure if you meet all the requirements? If you are excited about this opportunity but your experience does not align perfectly with every qualification in the job description, we encourage you to apply anyway. You may be just the right candidate for this or other roles.

Gowling WLG is dedicated to building a diverse and inclusive workplace. If you have a disability or special need that requires accommodation at any time during the recruitment process, please let us know.

While we appreciate all applications received, only those candidates selected for an interview will be contacted.