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About the Firm
We are a dynamic, multifaceted law firm that provides a wide range of legal services to a creative and entrepreneurial client base. We partner with the big and the small, from cutting edge startups to global corporations, early-stage entrepreneurs to established industry leaders, and household names to private individuals and their family offices. We are renowned for our sector specialisms which we combine with expertise across all the traditional practice areas to provide our clients with tailored solutions that truly add value.
We offer a collegiate, vibrant and supportive environment, a clear path for career progression and a strong platform from which to learn and grow. We look for high performing, committed and innovative people who aren’t afraid to push themselves to be the best they can be. We take an active role in helping our people be at the top of their game. We believe our people make us stand out and we empower them to meet their ambitions. We invest time in developing their skills and knowledge and run a number of development and training programmes throughout the year, as well as encouraging and supporting personal involvement in other areas of expertise.
The Role
Our well-established IP group is looking for a Trade Mark Paralegal to join our busy team, with responsibility for carrying out trade mark formalities, portfolio management, paralegal duties and client invoicing. The role provides support to the trade mark attorneys and lawyers in the team, and involves managing trade mark records, monitoring deadlines and preparing reports for clients. The role provides opportunities for direct correspondence with the relevant intellectual property offices, overseas attorneys, clients, and others in the firm.
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The successful candidate will have excellent attention to detail skills and be able to work on their own initiative as well as supporting a team. Ideally, they will have at least two years of experience as a Trade Mark Paralegal or administrator. They should be hard-working, enthusiastic and organised.
Responsibilities
Day-to-day duties may include:
- Managing and updating the trade mark records database with applications and disputes. This may include adding records, producing reports and auditing records on the WebTMS database.
- Maintaining a diary list, and ensuring matters have been dealt with by the deadline.
- Preparing the forms to file trade mark and design applications, oppositions and cancellation actions, and applications to record registrable transactions, directly at the UKIPO and WIPO, and also instructing overseas attorneys to carry out such work.
- Preparing draft reports (for instance upon filing, publication and registration) for clients, and liaising with clients, overseas lawyers and intellectual property offices under attorney supervision.
- Preparing and assisting with client cost estimates.
- Handling invoicing matters including the preparation of invoice narratives, reconciling estimates, time recorded against invoices and money on account, in addition to any other associated administrative tasks.
- Responsibility for managing trade mark and domain name renewals, including sending out letters to clients, checking responses, instructing renewals and monitoring deadlines.
- Preparing Power of Attorney documents, and arranging for notarisation and legalisation where required.
- Working with attorneys and lawyers to order search reports and setting up and renewing watch service notifications.
- Reviewing trade mark searches and watches and preparing brief reports.
- Assisting attorneys and lawyers with trade mark audits on trade mark portfolios taken over from other firms and preparing change of representative forms for trade marks.
- Managing incoming emails, alerts, and paper correspondence.
- Assisting with global recordal projects such as assignment or change of name recordals and managing the process.
- Updating client tracker documents, and taking notes on client calls, preparing action points for the attorneys.
- Assisting with evidence collection, for instance for US Declaration of Use deadlines.
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Person Specification
- Strong computer skills, including experience of using a trade mark management database. Experience of WebTMS/IPPO is desirable.
- Excellent organisational and time management skills.
- Attention to detail.
- Happy to work under pressure.
- Adaptable and flexible.
- Enthusiastic with a "can do" approach.
- CITMA Paralegal Qualification is desirable.
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