Registered Senior Trademark Agent/Lawyer

OLLIP Intellectual Property & Technology Law
Posting Date:
Apr 27, 2022
Company/Firm:
OLLIP Intellectual Property & Technology Law
Area of Law:
Intellectual Property (Trademarks)
Location:
Ottawa
Experience:
5+ Years

Description

OLLIP P.C. is seeking to hire a Senior Registered Trademark Agent to serve as the Head of its Trademark Prosecution & Industrial Design Group. The position is in-person, and applications will be considered on a rolling basis until a suitable candidate is found.

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About the Firm

OLLIP P.C. is a boutique law firm specializing in intellectual property and technology law, located in Ottawa. We protect IP assets for clients of all sizes (whether they be small, trendy local businesses or large multi-national corporations) across the province, country, and the globe.

By offering a broad range of IP experience—brand protection, litigation and appeals, copyrights, domain names, trademarks, industrial designs and mobile and e-commerce products—we have become a leading Canadian IP agency, helping to prepare, file, prosecute, protect and renew IP rights.

The Opportunity

We are seeking a motivated, organized, and experienced Senior Trademark Agent to head up the Trademark Prosecution & Industrial Design Group of Ollip P.C., including taking on the practice of a Senior Trademark Agent who will be retiring from the Firm. The position is located in Ottawa. Responsibilities include:

  • Researching and drafting trademark/industrial design applications;
  • Managing and responding to trademark/industrial design office actions;
  • Managing domestic and foreign trademark/industrial design portfolios, analyzing trademark searches and drafting trademark registrability opinions;
  • Advising clients on trademark/industrial design matters, including registrability, licensing, and transfers;
  • Researching and drafting affidavits, statements of oppositions, written representations, and other filings with CIPO in section 45 cancellation and opposition proceedings;
  • Providing trademark/industrial design litigation support;
  • Assisting in updating the Firm’s Thomson Reuters loose-leaf publication, Odutola on Canadian Trademark Practice;
  • Keeping apprised of developments in trademark/industrial design law, CIPO processes and procedures, and other relevant topics;
  • Managing docket systems and maintaining/updating precedents;
  • Supervising the work product of a team of law clerks who support the practice;
  • Assist in training/mentorship of colleagues and law clerks in the practice group; and
  • Other relevant duties as assigned.

Requisite Qualifications

  • Trademark Agent Designation with the College of Patent Agents & Trademark Agents (“CPATA”)
  • Minimum five (5) years of practice in trademark prosecution matters
  • Juris Doctor (J.D.) or other post-secondary education degree preferred

Other Skills

  • Outstanding persuasive drafting skills to convince trademark examiners and/or Board Members in s. 45 cancellation and opposition proceedings
  • Prosecution practice management experience preferred, but not required
  • Excellent computer software skills, including Microsoft Office, as well as prior experience with legal software (e.g., docketing, document management, and precedent management programs)
  • High technological aptitude considered an asset (including review of automated software results, search engine optimization, and other software-driven / computer-automated processes)
  • Experience in business development is an asset
  • Bilingualism is an asset

Remuneration

Salary commensurate with other small IP boutique firms in Ottawa, ON, as well as experience of applicant. Negotiable.

For further details on how to apply, please see attached advertisement. Applicants are strongly encouraged to visit our website at: https://ollip.com/team/careers/senior-trademark-agent/ 

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Contact Name Bayo Odutola/Julie Daet

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