US/PCT Patent Clerk
FIRM OVERVIEW
Marks & Clerk is one of the world’s leading intellectual firms, with our first Canadian office being established in 1921. With a qualified team of seasoned patent and trademark associates, we offer a full spectrum of technical expertise on all aspects of intellectual property matters – patents, trademarks, designs and copyright. This includes strategic and commercial advice on portfolio management, licensing, enforcement and litigation, and due diligence and valuation of intellectual property
Through a global network of 15 offices in Canada, the UK (across eight cities), Europe and Asia, Marks & Clerk has long-established relationships with other trusted IP firms worldwide and a unique ability to secure IP protection for clients looking to safeguard their innovations in multiple jurisdictions. Our clients come from a diverse range of industries and include start-ups, small and medium sized businesses and large multi-national corporations who have long-trusted us to deliver high quality, seamless and cost-effective services, both locally and globally.
We are currently seeking a US Patent Clerk to assist with our clients’ U.S. patent applications. The successful candidate will work closely with our Patent Team to submit new applications and perform post filing tasks. Although most U.S. patent applications in our care are handled through U.S. associate agents, some of our clients require us act directly in the USPTO on their behalf.
RESPONSIBILITIES
The U.S. Patent Clerk is responsible for preparing and filing new patent and industrial design applications with the United States Patent and Trademark Office.
The successful candidate will be responsible, directly or working with U.S. associate agents, to perform the following duties:
· New applications (U.S. provisional and non-provisional patent applications)
· Filing receipts
· Assignments and other transfers, including notices of recordation
· Notices of publication
· Foreign filing reminders
· Office Actions (prepare draft letter for agent as well as send reminders if required)
Preparing and/or filing information disclosure statements (IDS)
· Notices of Allowance (which includes preparing checklist, reporting letter and allowed claims; check IDS software if outstanding references need to be cited)
· Issued patents
· Maintenance fee reminders (which includes calculating the fees due and preparing letter as well as further reminders)
In addition to the foregoing, the successful candidates may be asked to assist with PCT Patent Clerk duties from time to time. Therefore, experience with preparing and reporting new PCT applications and familiarity with PCT procedures would be an asset.
SKILLS AND QUALIFICATIONS
The successful candidate must have:
· Patent clerk experience, including at least 2 years experience working with U.S. matters (experience with PCT applications an asset).
· Strong knowledge of USPTO systems, including especially Patent Center.
· Experience working in an electronic environment.
· Good understanding of legal reference materials, procedures, and legal filing systems.
· Excellent writing skills, including proper spelling, grammar, and punctuation for complex documentation.
· Ability to work in a fast-paced environment.
· Professional, responsive, and positive work attitude is critical.
· Strong knowledge of MS Suite (Outlook and Word primarily) and Adobe Acrobat.
· Legal Assistant Diploma/Certificate or Law Clerk Program/Paralegal degree would also be considered an asset.
If you are interested in this opportunity, please submit your resume and cover letter to [email protected].
Marks & Clerk Canada is an equal opportunity employer and will provide accommodations during the recruitment process upon request.
Currently, firm members enjoy a hybrid arrangement, working 1 to 2 days in the office and from home.
Marks & Clerk Canada requires all firm members to be fully vaccinated against COVID-19. Any exemption request will be considered on a case-by-case basis and granted only where the request meets the requirements of applicable legislation.
We thank all applicants for their interest; however, only candidates under consideration will be contacted.
Job Types: Full-time, Permanent
Pay: $60,000.00-$70,000.00 per year
Additional pay:
Benefits:
- Casual dress
- Company events
- Dental care
- Disability insurance
- Employee assistance program
- Life insurance
- Paid time off
- RRSP match
- Vision care
- Wellness program
- Work from home
Schedule:
Education:
- Secondary School (preferred)
Experience:
- direct USPTO: 2 years (required)
Work Location: Hybrid remote in Toronto, ON M5E 1G4
