Trademark Paralegal

Location
England, London
Salary
Negotiable
Posted
21 Oct 2016
Closes
15 Nov 2016
Ref
2523860/001
Contact
Kayla Powell
Job Title
Paralegal
Practice Area
Patent / Trademark
Contract Type
Temporary
Hours
Full Time

A law firm headquartered in London is seeking a Paralegal to work within the trade mark team. This role is a fantastic opportunity for someone who is looking to grow within a trade marks practice. This will suit you if you are looking to grow your trade mark experience, or if you are an experienced Paralegal who may have completed your LPC and are now looking to begin your career within trade marks. You will be supporting the trade mark team and other members of the wider IP team.

Key duties of the Paralegal include:

  • Assisting with pre-filing searches, including instructing outside search agency, follow up and manage search turnaround timeframesAssisting with online research into third party marks
  • Research PoA requirements within input from local attorneys, collate PoAs and input relevant information
  • Prepare application forms/filing instructions
  • Proactively prepare and send off filing reports without Solicitor/TMA prompting
  • Monitor status of application in electronic diary, including adding country specific expected timeframes for various stages of prosecution, pro-actively prepare and send emails to local attorneys to follow up where appropriate without Solicitor/TMA prompting
  • Respond to basic specification objections, including review Solicitor/TMA report to client, check client's instructions and draft appropriate response to IPO
  • Have a broad understanding of how long tasks take and will follow up with Solicitor/TMA appropriately before, up to, and including meeting of the deadline
  • Review and interpret all incoming and outgoing correspondence for relevant deadlines. Adds hard deadlines, client deadlines and appropriate reminders without prompting from Solicitor/TMA. Appropriately manages any discrepancies in deadlines in incoming and outgoing correspondence
  • Support Solicitor/TMA in collating evidence of use, evidence of registration in other jurisdictions
  • Recording licences, assignments, and other registrable transaction; has knowledge of UK and OHIM formalities requirements for recordal and will collate necessary information from the client, prepare and file recordal forms.
  • Updating client TM reports, consistently adhere to client specific requirements for customised reports

Essential skills of the Paralegal:

  • Minimum of one years' experience either within a trade marks practice or strong Paralegal experience with an interest in trade marks (intended only as a guide)
  • Ability to carry out all aspects of trade mark and design formalities work accurately
  • Excellent interpersonal/communication skills, with the ability to build strong relationships both externally and internally across the Firm
  • Ability to stay calm and work well under pressure
  • Ability to prioritise workload and demonstrate flexibility when required
  • Ability to take ownership of formalities management
  • Basic working knowledge of the trade mark application processes
  • Excellent attention to detail and diligent management of deadlines
  • Ability to work independently without supervision, as well as being able to work as part of a close team
  • Flexible and proactive approach with a 'can-do' attitude
  • ITMA Trade Mark Administrators Certificate
  • Thorough knowledge of IPPO (webTMS) required
  • Knowledge of Saegis and Serion desired but not essential

As a Paralegal in this team you will have a fantastic opportunity to develop your skills working effectively within the firm. The role will see you become an integral support to the successful team and gain experience within a renowned law firm.

If you are a driven, determined and want to take the next step in your career, this paralegal position is the job for you. Apply today!