Patent Engineer at PCK Intellectual Property
Toronto, ON M4T 1X3, Canada -
Full Time


Start Date

Immediate

Expiry Date

27 Nov, 25

Salary

60000.0

Posted On

28 Aug, 25

Experience

1 year(s) or above

Remote Job

Yes

Telecommute

Yes

Sponsor Visa

No

Skills

Epo, Office Action Responses, Life Sciences, Document Management, Management Software, Time Management, Computer Science, Communication Skills, Legal Requirements, Wipo

Industry

Other Industry

Description

A BIT ABOUT US

PCK Intellectual Property (“PCK”) is a leading boutique IP firm known for its exceptionally strong patent and trademark origination practice, acting directly before CIPO, the USPTO and WIPO. We work with clients across Canada, the U.S., and Europe, protecting innovations in software, telecommunications, medical devices, mechanical engineering, chemistry, and more. Our co-founders are authors of Canadian Patent Law (5th edition), a treatise cited by the Supreme Court of Canada, reflecting our thought leadership in IP law.
We value diversity, inclusion, and a positive, supportive workplace where our team thrives.

THE SKILL SET

  • Proficiency in preparing office action responses in either Canada or the US (or both).
  • Familiarity with formal claim requirements, including ensuring proper antecedence, claim dependencies, and other jurisdiction-specific requirements.
  • Analytical Thinking: Ability to analyze responses to different types of office action objections, spot and raise issues, and ensure completeness of responses with respect to legal requirements.
  • Excellent Communication Skills: Effective written and verbal communication skills to draft clear and concise responses to office actions, and communicate complex technical concepts to diverse audiences.
  • Attention to Detail: Meticulous attention to detail in reviewing and editing documents to ensure accuracy and compliance with legal requirements.
  • Time Management: Ability to manage multiple office action responses simultaneously, prioritize tasks effectively, and meet tight deadlines in a fast-paced environment.
  • Technical background preferred but not mandatory: Background in a technical field such as engineering, computer science, or life sciences to understand and analyze complex inventions across different industries.
  • Research Skills: Proficiency in conducting comprehensive patent searches, prior art searches, and freedom-to-operate analyses using various databases and resources.
  • Familiarity with Patent Databases and Tools preferred: Proficiency in using patent databases such as WIPO, USPTO, EPO, and patent management software for document management and workflow optimization.
  • Energetic and enthusiastic outlook, ability to work in a fast-paced environment and effectively under pressure, flexibility and ability to adapt to change.
  • A positive attitude, a passion to succeed, a drive to surpass expectations.
    Please note this is not a patent agent trainee position.
Responsibilities

1. RESPONSES TO PATENT OFFICE CORRESPONDENCE (PRIMARY RESPONSIBILITIES):

  • Prepare responses to office actions, including amending claims, addressing objections, and responding to restriction requirements/unity objections, missing parts, and other formality objections.
  • Prepare responses to certain notices of formality objections.
  • Prepare voluntary/preliminary amendments to amend claims for compliance with local regulations.
  • Manage multiple priorities and ensure important response deadlines are met, especially for time-sensitive matters.

2. OTHER PATENT-RELATED TASKS (AS BANDWIDTH ALLOWS / BASED ON ORGANIZATION’S NEEDS):

  • Perform patentability searches, landscape searches, and freedom to operate searches.
  • Any additional tasks assigned from time to time.
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