Patent Administrator / Paralegal

Reporting to: IP Paralegal Services Manager

Working for: This role supports partners, associates and trainees

Permanent role: Full time position

Location: The principal place of work will be the Firm’s London office. The Firm is located on other sites within the UK and Europe. Travel to and work from these offices may be required from time to time.

Hours of work: 35 hours per week to be worked in accordance with the provisions of the Firm’s flexitime scheme.

Hybrid working pattern: 3 days working in the office, 2 days working from home. During the probationary period, to facilitate training, 4 days per week in the office is highly recommended.

Purpose of role: To provide a full support service to qualified and trainee Patent Attorneys. Work as part of an overall team to ensure a high level of support is delivered across the London office and the Firm as a whole.

Job Specification:

• Preparation of documentation relevant to patents, designs and/or trademarks as appropriate and monitoring various formalities processes relevant to the filing of UK, European, International and Patent Co-operation Treaty (PCT) applications.
• Typing and amending Word documents with technical content.
• Preparing forms and letters from templates with case-specific information.
• Maintaining records for fee earner cases in respect of various formalities eg maintaining US IDS records for a patent family.
• Assisting fee earners in obtaining information from EPO, UKIPO, EUIPO, WIPO and other IP related websites and databases.
• Assistance with assignments, changes of name/address and other recordals, including obtaining/collating information on requirements/costs, preparing documents (eg Powers of Attorney) for execution by clients, preparing forms/instructions to overseas associates, monitoring progress of recordals and reporting to client.
• Preparing basic correspondence/emails to clients, IP offices and overseas agents.
• Preparation of various documentation and presentations relevant to fee earner involvement in committees and other professional activities.
• Dealing with incoming and outgoing communications.
• Preparation and handling of all ancillary documentation as necessary (eg file management, photocopying, scanning etc).
• Instructing overseas agents to attend to filing of new patent, design and trade mark applications (including national phase of PCT applications), to include attending to all filing formalities.
• Preparing and/or sending emails on behalf of fee earners.
• Monitoring fee earner deadlines/workloads, liaising with central Records Department and taking necessary action in respect of deadlines wherever appropriate.
• Maintaining fee earner diary.
• Preparation of cost estimates for clients.
• Running status reports and portfolio schedules as and when required by clients.
• Adding official fees and firm service charges to our billing system.
• Preparation of invoices.
• Monitoring of fee earner Work In Progress (WIP) eg unbilled time or service charges wherever appropriate.
• Checking new client details on Inprotech database and updating various other records.
• Maintaining client files with relevant client specific information, eg standard procedures re billing, correspondence etc.
• Arranging fee earner travel as required.
• Preparation of Travel Itineraries and dealing with expense claims on behalf of fee earner, if required.
• Acting as point of contact for client enquiries on behalf of fee earner.
• Making and receiving telephone calls and dealing with general enquiries.
• Point of contact when arranging internal and external meetings, booking of rooms, venues and refreshments.
• As required, assisting with ad hoc responsibilities and administrative tasks to support fee earners.

Person Specification:

• Ability to work independently to a high standard and use own initiative wherever appropriate.
• Excellent organisational skills.
• Efficient, able to prioritise to meet deadlines and multi-task.
• Must be able and willing to learn new systems and procedures.
• Must be a team player, personable and approachable.
• Able to work under pressure and respond to changing demands on a daily basis.

Essential skills/knowledge/expertise:

• Very high attention to detail.
• Good working knowledge of Microsoft Word, Excel and Outlook.

Preferred skills/knowledge/expertise:

• Experience of working within an IP, legal or other professional services environment.
• Working knowledge of PowerPoint advantageous.
• Any experience of Inprotech Database system advantageous, although systems induction training will be provided.

Certifications:

• Preference for CIPA Introductory Certificate in Patent Administration Course (IPAC) and/or CITMA Paralegal Course. The Paralegal job title applies to those who have attained one or both of these certifications.

This job description describes the principal purpose and main elements of the job. It is a guide to the nature and main duties of the job as it currently stands. It is not intended as a wholly comprehensive or permanent schedule and may be varied from time to time. It does not form part of the contract of employment.