Job Description: Intellectual Property Clerk

The Intellectual Property (IP) Law Clerk works as part of the corporate legal team who are responsible for managing various Intellectual Property matters.  The Intellectual Property Law Clerk will work closely with the Senior IP Law Clerk, many lawyers on the Sun Life legal team, and Sun Life business partners in Canada and internationally. 

What will you do?

• Prepare and file Canadian trademark applications and engage with internal business partners and the Canadian Intellectual Property Office (CIPO) throughout the application process (including with respect to responses to Registrars’ objections (office actions), Approval Notices, advertisements, and Notices of Acceptance); 
• Working with legal counsel, prepare and file Canadian trademark Statements of Opposition and engage with internal business partners and CIPO throughout the opposition process; 
• Order and review trademark searches and prepare opinions, for internal business partners, on registrability for proposed Canadian and international trademarks and summaries of opinions received from trademark agents for proposed international trademarks;  
• Arrange for the filing of international trademark applications, engage with our internal business partners and international trademark agents throughout the application process, (including with respect to responses to Registrars’ objections (office actions)); 
• Working with legal counsel arrange for the filing of international oppositions, engage with our internal business partners and international trademark agents throughout the opposition process; 
• Ensure that Canadian and International trademark registrations are renewed and that the required maintenance documents are filed with the applicable Canadian and international Trademarks Offices; 
• Ensure the use of Sun Life’s trademarks by third parties in relation to one-time event sponsorships and other instances of minimal use are properly authorized and/or controlled through the preparation of consents; 
• Assist with the preparation of materials on intellectual property issues for business unit and corporate office training and information sessions; and 
• Update Intellectual Property database and generate trademark reports, such as task and portfolio reports. 

What do you need to succeed?

• Excellent organizational skills and ability to prioritize high volumes of work and to respond to constantly shifting priorities; 
• Working knowledge of the Canadian Trademarks Act;
• Proactive follow-up on outstanding matters; 
• Strong aptitude for detail; 
• Decisive and able to work with minimal direction/supervision; 
• Excellent communication skills, both verbal and written with an emphasis on plain language writing; 
• Strong team player;  
• Strong knowledge of Microsoft Office; 
• Strong online searching/researching skills; 
• Knowledge of copyright, patent and other intellectual property would be an asset but is not required; and 
• Ability to speak French would be an asset but is not required.

Qualifications

• 3+ years trademark experience; and
• Law Clerk Diploma, post-secondary education or Canadian registered trademark agent designation is preferred. Consideration would be given to a candidate who does not have one of the foregoing, but has successfully completed one or more of the following courses: (i) Introductory or Advanced Trademark Course offered by the Institute of Intellectual Property of Canada; or (ii) Courses deemed comparable ,

provided such course has at least 30 hours of relevant instruction.

What's in it for you?

• Working within a high performance culture.
• Supportive working environment, culture of collaboration.
• Talented and diverse workforce; opportunity to launch a rewarding career.
• A company that promotes health, wellness, and work/life balance.
• We encourage our employees to champion continuous improvement.
• We offer a competitive Total Rewards package and flexible working arrangements.