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About the Role
This role has particular focus on Patent Searching and Watching and a minimum of 12 months hands-on experience in this area is essential.
It is an exciting new role within our highly experienced, multi-disciplinary Paralegal Team. The responsibilities are broad and varied with particular focus on Patent Search/Watching, making it an excellent opportunity for someone looking to apply and further develop specialist expertise alongside a wider IP practice.
The team is made up of experienced IP Paralegals with responsibilities across Designs, Patents, Legal and Assignments (including litigation) and Trade Marks (each member does not have experience in all of these). This structure provides a greater degree of flexibility and more opportunities for varied work and cross training.
As an IP Paralegal, you will play a key role in supporting Fee Earners, taking ownership of a wide variety of substantive tasks that do not require a qualified attorney. Most of the routine, structured work is handled by dedicated Formalities and Legal Assistant Teams. This allows our Paralegals to focus on more interesting, analytical, and varied work that draws on their experience and judgement. Once established in the role, you’ll be trusted to manage your workload independently, apply your knowledge to complex matters, and become an integral part of delivering exceptional client service.
Our Paralegal Team is made up of experienced professionals with expertise spanning Patents, Trade Marks, Designs and Assignments. While experience across all these areas is not essential, a willingness to broaden your knowledge and collaborate across disciplines will help you thrive in this stimulating and rewarding role.
Please note that whilst this role will involve working closely with our Fee Earning teams, it is not a pathway into a Trainee Patent Attorney position.
RESPONSIBILITIES
General Responsibilities
- Working closely with fee earners and supporting delivery of top tier IP Services to clients
- Extensive direct client contact
- Helping supervise, train and mentor junior/less experienced paralegals and other IP support staff where appropriate
- Responsibility for various non-technical stages of prosecuting patent/trade mark/design applications
- Maintaining records on our IP Management system (Inprotech). Including helping ensure our records remain accurate and current. This may involve cross referencing our details with PTO registers and/or 3rd party databases
- Handling and coordination of filing of multiple international applications, for example PCT National Phase, international TM filing program, etc. Plus management of formalities requirements arising
- Support and input into project work, including business change and systems projects
- Preparing cost estimates and forecasts
- Managing takeover of client portfolios
- Support/management of renewals; including processing adhoc renewal instructions (where clients ask JAK to handle renewal) and helping deliver renewals services. This may involve instructing our renewal partner, instructing foreign agents or renewing direct at PTOs
- Preparing and checking client portfolio reports. And once checked, forwarding to clients
- Handling enquiries from clients and foreign agents
- IPR searching and watching – including analysis of results
- Filing and recording assignments and other name/address changes
- Obtaining and managing owner/applicant signature, notarisation and legalisation of documents
- Helping undertake due diligence/legal research
- Requesting invoices and assistance with billing
- Liaising with support teams within J A Kemp
- Ad hoc duties specific to the teams, where you are able to add value and provide support to the firm
- Individual paralegals may be assigned specific responsibilities to take the lead or coordinate certain areas, such as main liaison for a particular team, client, IPR Type, service etc
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Additional specific IP Right related responsibilities (where Paralegal has relevant background experience or training in these IP rights)
Patent Responsibilities
- Management/completion of US Information Disclosure Statements
- Management of Indian ongoing Section 8 requirements and other foreign formalities
- Verifying case management reminders, data and charging items
- Obtaining and organising citations
- National Phasing of PCT Applications
- Patent Search and Patent Search Management - including running patent and NPL searches yourself, liaising with external, specialist search providers (and placing orders with them), ordering copies of Journal Articles and other NPL, updating patent watch results.
Trade Mark Responsibilities
- Preparing Trade Mark applications (including drafting specifications and resizing image files for logos/devices)
- Preparing, processing and checking Trade Mark forms from the UKIPO, EUIPO and WIPO Registries
- Reviewing examination reports and drafting advice to clients
- Reviewing watch notices/surveillance reports and reporting potential conflicting applications to clients
- Reporting prosecution progress to clients – filing receipts, search reports, acceptance, publication and registration certificates
- Working closely with Trade Mark Legal Assistants (including requesting standard letters be processed, invoice requests, faxing, scanning, booking couriers and delegating administrative tasks as they arise)
- Reviewing Inprotech reminders and sending out reminders where appropriate (convention filing emails)
- Monitoring deadlines and reminding Fee Earners/taking appropriate action themselves
- Compiling and collating evidence for use in oppositions/appeals/statements of use
- Responding to client queries and providing advice to clients on Trade Mark processes
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Design Responsibilities
- Preparing design applications (including preparation/review of drawings)
- Filing design applications online at UKIPO, EUIPO and WIPO
- Preparing instructions for foreign design filings for sending to foreign attorneys
- Reporting communications from national offices (and foreign attorneys) including examination reports and grant notifications
Legal and Assignment Responsibilities
- Supporting the litigation function
Skills
- Demonstratable track record in a Paralegal or other highly autonomous IP Support Role (essential)
- Able to prioritise own workload, work to tight deadlines and work flexible hours (essential)
- Experience in Inprotech (desirable)
- Competent in MS Word and MS Excel (essential)
- Exposure to assignment work would also be useful
Qualifications
- Educated to degree standard (desirable)
- CIPA/CITMA/EPAC qualification (desirable)
Team Working
The Paralegal will need to develop positive working relationships with colleagues and be prepared to help out wherever and whenever necessary. Must be willing to adapt to change and proactive in offering suggestions/solutions to problems and/or queries.
All staff are required to maintain a professional image at all times.
Recruitment Process
Early application is encouraged, as we may close the posting once we have received sufficient suitable response.
J A Kemp LLP is an equal opportunities employer which means we treat people fairly. We welcome applications from all suitably skilled persons regardless of their gender, age, race, disability, ethnic background, religion/belief, sexual orientation, gender reassignment or marital/family status.
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