Senior Trademark Paralegal

Overview

35 hours per week, 9:30am to 5:30pm, but additional hours may be required. We are happy to consider agile and flexible working patterns. Our approach to hybrid working allows for up to 40% of time working from home and 60% in the office; please contact a member of the recruitment team to discuss further. This role is to support our London IPMT team in the UK trade mark prosecution practice.

Responsibilities

• Technical trade mark and design formalities at UKIPO and WIPO, including filing trade mark and design applications, all prosecution, renewal and post-registration steps which will require filling out and submitting official forms at UKIPO and WIPO.
• Corresponding with fee-earners across our international practice, clients, foreign IP counsels, UKIPO and WIPO.
• Processing all incoming communications from UKIPO, WIPO and foreign counsels, docket deadlines, distributing them to the relevant fee earners.
• Arranging the preparation and execution of supporting documents for filings, recordals and renewals.
• Monitoring deadlines and reminding the fee earners in good time to ensure they have been complied with.
• Seeking instructions in relation to, and dealing with, renewals.
• Providing administrative support including producing status reports for trade marks and designs, managing foreign IP counsels\’ invoices, electronic filing of correspondence and assisting with data entry and maintaining our IP database.
• Carrying out company searches and trade mark searches online as well as running searches via Corsearch.
• Collating trade mark search reports to enable our lawyers to provide advice to clients on availability and registrability of trade marks.

Qualifications and requirements

• At least 4 years experience in trade mark prosecution, design formalities, and trade mark and design renewals is essential.
• Demonstrates experience of managing a significant workload, adhering to tight deadlines.
• Understands and adheres to firm policies (including in relation to billing and accounts payable management).
• Demonstrates experience in implementing and maintaining processes in order to deliver an accurate and good quality service.
• Ability to work efficiently in a fast-paced environment with or without direct supervision.
• A qualification as a CITMA Paralegal would be an advantage, but if the successful candidate has no such qualification, our firm is willing to sponsor the CITMA course subject to good performance for 6 months in the role.
• Strong computer literacy, including proficiency in word processing and spreadsheets.
• Experience with Corsearch and Anaqua (or other trade mark portfolio management tools) would be a distinct advantage, although training will be given.
• In addition, the following attributes are essential for the role: meticulous with good attention to detail; well-organised and able to own and pro-actively manage workload; strong written and verbal communication skills; a team player who can contribute to informal support and mentoring; good interpersonal skills with colleagues, service providers or client representatives; proactive with initiative and the ability to suggest process improvements and provide constructive feedback.