Intellectual Property Advisor

The role

We are looking for an Intellectual Property Advisor to support our Client Agreements and Intellectual Property (CAIP). The Intellectual Property Advisor would be someone who shares our core values of Integrity, Excellence, Respect and Creativity.

The incumbent will be managing NRC's intellectual property, including developing and implementing diverse IP protection strategies to support the current and future needs of the organization. As part of this role, the IP Advisor will prepare, file and, where applicable, prosecute provisional and formal patent applications including those under the Patent Cooperation Treaty (PCT).

This position reports to the Leader, IP Management. The incumbent is expected to provide guidance to the Client Agreements and Intellectual Property Branch (CAIP), researchers and managers with whom they collaborate. This position is within a team providing intellectual property strategy and protection services to Research Centres across NRC.

The work also includes the management of external contracts with patent agents/patenting agencies and the provision of advice to the Research Centre clients on options available and suggested actions to be taken (including the management of protection costs).

The IP Advisor could also review and provide support in the negotiation and drafting of various agreements, including licence agreements, collaborative research agreements and research services agreements.

The IP Advisor may also contribute to a variety of IP-related projects such as IP awareness initiatives.

Screening criteria

Applicants must demonstrate within the content of their application that they meet the following screening criteria in order to be given further consideration as candidates:

Education

• University degree in Science or Engineering.
• Graduate/Advanced degree will be considered an asset but not required.
• Registration as a Canadian Patent Agent.
• Registration or eligibility and willingness to obtain registration as Patent Agent in the United States.
• A law degree with eligibility for membership in the Bar of one of the provinces or territories of Canada or in the Order of Notaries in the Province of Quebec will be considered an asset but not required.
• Registration as a Canadian Trademark Agent will be considered an asset but not required.

For information on certificates and diplomas issued abroad, please see Degree equivalency

Experience

• Significant* and recent** experience in reviewing invention disclosures.
• Significant* and recent** experience in preparing (including drafting) and prosecuting patent applications in advanced science or engineering disciplines.
• Significant* and recent** experience in communicating directly with inventors to define invention scope and range of application.
• Significant* and recent** experience in advising clients on intellectual property protection options, strategy and related issues.
• Significant* practical experience in the hands-on application of expertise in the technical field of the applicant's degree(s) would also be considered an asset but not required.
• Significant* practical experience in the negotiation and drafting of licensing agreements, and IP-related provisions in collaboration agreements and research services agreements would also be considered an asset but not required.

*Significant is defined as at least 2 to 6 years of experience. **Recent is defined as within the last five years.

Condition of employment

Secret clearance

A thorough security clearance process will be applied.

For a Secret Clearance, verification of background information over a period of 10 years is required. Individuals must have lived in Canada for a sufficient period of time to enable the security screening process.

Must maintain la patent agent licence in good standing in Canada and in the U.S.

Assessment criteria

Technical competencies

• Advanced*** knowledge of the procedures involved in IP protection in Canada, the United States, Europe and via the PCT including the prosecution of patents, investigating validity of patents or other rights, and patent/literature searches is essential.
• Solid** knowledge of a broad range of engineering and scientific fields to the extent required to comprehend the scientific value and patentability of inventions.
• Solid** knowledge of Legislation, Regulations, case law, Rules and policies relevant to patents in Canada and the United States as well as International Agreements and International Organizations to which Canada is a signatory.
• Basic* knowledge of the markets for inventions and the financial and technical constraints affecting their commercialization.
• Ability to develop and implement IP protection strategies.
• Ability to work in a fast-paced environment, and to prioritize workload in order to meet multiple deadlines.
• Ability to assess, manage and mitigate risk in a business environment.

*Basic – a basic understanding of the knowledge area is required. The level of knowledge may be acquired through relatively brief (six months or less) training or through regular exposure. **Solid – a solid working level knowledge is required. The level of knowledge is used by fully qualified individuals to solve day-to-day problems and address normal issues. ***Advanced – in-depth knowledge (detailed and focused) &/or broad (extensive) knowledge of the subject area. The knowledge is used to solve new problems and/or issues.

Behavioural competencies

• Management services - Client focus (Level 2)
• Management services - Communication (Level 3)
• Management services - Initiative (L…)

City: Ottawa

Organizational Unit: Client Agreements and Intellectual Property Branch

Classification: RCO

Tenure: Various

Work arrangements: Due to the nature of the work and operational requirements, this position may be eligible for a limited hybrid work arrangement (combination of working onsite and telework).

At the NRC, we recognize that Indigenous candidates may have important connections to their communities and you may be eligible for an exception to this work arrangement. Alternative work arrangements may also be considered to accommodate candidates as required. To learn more about these options, please contact the NRC Hiring team using the contact information below.

Priority may be given to the following designated employment equity groups

Indigenous Peoples* (First Nations, Inuit and Métis), persons with disabilities and racialized persons*.

• The Employment Equity Act, which is under review, uses the terminology Aboriginal peoples and visible minorities.

Candidates are asked to self-declare when applying to this hiring process.

ANTICIPATORY staffing for continuing and term positions

This position is being re-posted. If you had previously applied, there is no need to re-apply.