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Bilingual patent agent trainee

Mbm Intellectual Property Law

This is a Full-time position in Ottawa, ON posted September 11, 2019.

Job Description MBM patent agent trainees work under the supervision of a Patent Agent and/or Partner.

Solid technical training enables the trainee to assist clients with the drafting and prosecution of their patent application.

Trainees may also be called on to offer technical advice to the legal department when litigation matters arise in their area of technical expertise.Job DutiesDraftingConduct prior art searches, utilizing an appropriate search strategy in view of the goal of the prior art search (e.g.

patentability) and efficiently identifies and sorts key references from search results.Meet with inventors and prepare first draft of patent applications that:identify points of novelty or advancement of the art; related embodiments and related potential commercial embodiments; and necessary teaching to support or enable a broad scope of claimsarticulate all of the above in writing; andidentify and articulate areas of concern to senior supervising professionalProsecutionReview applications for Statements of Invention, and prepare appropriate Voluntary Amendments.Review Office Actions and prepare first draft of reporting letter to either foreign or domestic client.Review Examiner’s objections, world-wide prosecution, disclosure and claims in preparation for conference call with client.Prepare first draft of Office Action Responses considering client’s instructions and amends to conform to CDN Law when applicable.Review MOPOP (or equivalent ) and case law in search for suitability of arguments to overcome Examiner’s objectionsIdentify alternative options for responding to the Examiner’s objections and formulate an appropriate Response based on considerations such as the client’s objectives, strength of the argument, approaches taken in other jurisdictions.GeneralMonitor deadlines/activities related to client portfolios and coordinate the appropriate next steps with the supervising professional.Prepare first draft of various communications to clients appropriate to their needs and level of understanding.Job Requirements and QualificationsSolid professional proficiency in both official languages (English and French) required.Strong preference given to candidates with a B.

Sc., M.

Sc., or Ph.D.

in Mechanical Engineering.Willing to work towards patent agent certification.Creative problem solving skills coupled with the ability to analyze technical/scientific problems.A keen interest in technology.Strong attention to detail.