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Own Innovation’s strength is its diverse and enthusiastic IP team, which includes lawyers, patent and trademark agents, and IP management staff, all vital to the firm’s operations. We are proud to have an accommodating, diverse, and close-knit work environment based on collaboration, respect, and professional growth.

INTELLECTUAL PROPERTY CLERK – CONTRACT POSITION

Patent & Docketing | Parental Leave Coverage

Position Type: Full-time Contract (12 months with possible extension to 18 months)
Location: Remote (must be based in Canada)
Start Date: Immediately

Job Summary: We are seeking a detail-oriented and organized Intellectual Property Clerk to play a crucial role in supporting our IP operations during a parental leave coverage. The ideal candidate will perform various clerical and administrative tasks including comprehensive docketing for all IP matters and patent prosecution support, requiring strong organizational skills, exceptional attention to detail, and the ability to manage multiple tasks and deadlines efficiently in a high-volume environment. This position involves maintaining accurate prosecution records, managing dockets within strict service level agreements, and providing excellent support to legal professionals and clients.

Key Responsibilities:

Docketing & Database Management:

• Process all incoming correspondence within 24-hours, escalating volume or complexity issues as needed
• Monitor and manage centralized docketing inbox, organizing correspondence into appropriate workflow folders
• Review, analyze, and extract pertinent information from correspondence to determine nature, deadlines, and required actions
• Verify matter reference numbers match between correspondence and docketing system before processing
• Input data into IP management software daily with meticulous accuracy
• Generate comprehensive IP portfolio status reports and docket reports as requested
• Maintain organized filing systems following standardized naming conventions
• Download, process, and distribute official correspondence from CIPO, USPTO, WIPO, EUIPO and other patent offices
• Perform quality control checks as first review layer
• Cross-reference official IP databases for verification and status checks
• Escalate ambiguous correspondence, unclear deadlines, or system issues to IP Operations Manager

Patent Prosecution Support:

• Prepare and file Canadian and US patent applications with subsequent client reporting
• Draft and file office action responses, including restriction requirements and examination reports
• Coordinate with foreign associates for international patent filings, NPE applications, and responses
• Prepare and file Information Disclosure Statements (IDS) with USPTO
• Process US Issue Fee payments when instructed and provide client reporting
• Prepare formal documents including assignments, powers of attorney, and declarations for filing at CIPO and USPTO
• Proofread all patent documents for accuracy, grammar, formatting, and compliance with patent office requirements
• Monitor patent cooperation treaty (PCT) procedures and national phase entry deadlines
• Conduct basic patent searches and status checks through online databases
• Manage correspondence from foreign associates including invoices and filing instructions

Client & Administrative Support:

• Draft professional correspondence and utilize existing precedents, ensuring clarity and compliance with relevant standards
• Prepare detailed invoices and accounts for completed legal and IP matters
• Manage client billing including statement preparation, disbursement tracking, and payment follow-up
• Process new client onboarding including KYC requirements, conflicts checking, engagement letters, and file opening
• Handle phone calls professionally, demonstrating excellent phone etiquette while addressing client inquiries
• Coordinate document execution and signature collection from clients with appropriate follow-up
• Support administrative needs including event coordination and professional travel arrangements
• Process and submit foreign associate invoices to accounting department
• Maintain confidentiality of all client information and privileged communications

Required Qualifications:

• Minimum 3 years of clerical or administrative experience in intellectual property or legal environment
• Strong knowledge of IP docketing procedures, deadline calculation, and diary management systems
• Understanding of Canadian and US patent prosecution procedures and filing requirements
• Ability to work within strict 24-hour processing timelines while maintaining accuracy
• Proficient data entry skills with exceptional accuracy and attention to detail
• Experience with IP docketing software and document management systems
• Excellent proofreading abilities and knowledge of legal terminology
• Strong written and verbal communication skills with professional phone etiquette
• Ability to work independently in a remote environment while managing multiple priorities in a fast-paced setting
• Demonstrated ability to escalate issues appropriately and exercise sound judgment
• Strong computer skills including advanced proficiency in Microsoft Office Suite (Word, Excel, Outlook)
• Ability to handle confidential information with discretion and maintain professional conduct
• Must be legally authorized to work in Canada

Preferred Qualifications:

• Diploma in Legal Assistant, Law Clerk, or Paralegal Studies from an accredited Canadian institution
• Experience with specific IP management software (e.g., Pattsy, Patricia, Foundation IP, Alt Legal, Equinox, or similar)
• Knowledge of CIPO, USPTO, WIPO, and EUIPO online filing systems and databases
• Experience with worldwide patent prosecution and foreign filing procedures
• Familiarity with PCT procedures and national phase entry requirements
• Experience managing high-volume docketing inboxes with multiple workflow streams
• Experience with accounting software and billing systems (e.g., QuickBooks, PCLaw, Clio)
• Knowledge of document management systems (e.g., iManage, NetDocuments)
• Understanding of Canadian Rules of Civil Procedure as they relate to IP matters
• Experience with foreign associate correspondence and international filing coordination
• Bilingual (English/French) considered an asset
• Trademark prosecution experience considered an asset

We are committed to employment equity and diversity in the workplace and welcome applications from women, visible minorities, Indigenous peoples, persons with disabilities, persons of diverse sexual orientation and gender identities, and all other qualified individuals. We are dedicated to providing an inclusive and barrier-free work environment, beginning with the hiring process. If you require accommodation at any stage of the application process, please let us know.

Join our team as an IP Clerk where your contributions will be valued, and your skills will help drive our success in supporting innovation and intellectual property protection worldwide.