Patents Law Clerk

Hatch - Mississauga, ON (9 months ago)

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Requisition ID: 22243

Job Category: Legal

With over six decades of business and technical experience in the mining, energy, and infrastructure sectors, we understand that challenges are changing rapidly in every industry. We respond quickly with solutions that are smarter, more efficient, and innovative. We draw upon our 9,000 staff with experience in over 150 countries to challenge the status quo and create positive change for our clients, our employees, and the communities we serve.

The Hatch Technology Commercialization group facilitates, manages, and governs Hatch’s internal product and service development portfolios across the mining and metals, energy, and infrastructure sectors. We are currently seeking a Patent Clerk to be based in Mississauga and manage our global portfolio of patents.

This is a collaborative role for someone with strong experience in the area of intellectual property and patents, preferably as an intellectual property legal assistant or law clerk, and who is looking for an opportunity to work closely with clients, inventors, development teams, commercialization managers, and senior executives.

This person will have experience carrying out and guiding prior art searches, knowledge of freedom to operate analyses and be able to provide sound advice on patent processes. The person for this role will be well organized and able to independently manage and administer a portfolio of over 475 patents and act as Secretary and member of the IP Management Committee. The successful candidate’s responsibilities will include, but are not limited to:

Responsibilities:
Daily operation and administration of a >475 patent portfolio
Monitoring of patent due dates via docketing (i.e. Office actions, renewals, etc.) and follow up with inventors and/or internal and external counsel
Prepare and complete annual renewal instructions to inventors and a third-party vendor
Prepare and submit patent prior art searches
Coordinate and provide advice on new patent applications respecting costs, strategy and the like
Complete reports and presentations, as required

Qualifications:
Minimum of 8 years of previous experience in intellectual property, preferably as an Intellectual Property Legal Assistant or Patent Law Clerk
Successful completion of a post-secondary education, preferably in an IP law clerk program
Experience with Foundation IP by CPA Global, PatSnap, and/or online patent search tools is an asset
Exceptional written and verbal communication skills as well as thorough proofreading skills
Ability to use discretion when dealing with confidential information
Highly organized, detail oriented, flexible, and self-motived

We are committed to fostering a workforce in each of our locations that reflects the diversity of the communities in which we operate. Hatch is an Equal Opportunity Employer that considers employment applicants without regard to age, race, colour, national origin, citizenship, religion, creed, sex, sexual orientation, marital status, disability or any other protected status. If you have any special needs requirements, please let us know. We will do our utmost to accommodate, in accordance with applicable local legislation.