Reporting to: IP Paralegal Services Manager

Working for: Partner, 1 Associate and the Bristol TSE team including one of the Firm’s larger clients

Location: The principal place of work will be the Firm’s Bristol 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: Full time – 35 hours per week. Part time – Pro-rata. In accordance with the provisions of the Firm’s flexitime scheme

Hybrid working pattern: 60:40 (3 days in office/2 days from home). Part time – Pro rata. During the probationary period and to facilitate training, 4 days per week in the office is highly recommended (dependent on full/part time).

Purpose of role: To provide a full support service to qualified and trainee Patent Attorneys. Part of the role is dedicated to support one of the Firm’s major clients. Work as part of an overall team to ensure a high level of support is delivered across the Bristol office and the Firm as a whole.

Job Specification:

• Maintaining records for Attorney cases in respect of various formalities
• Maintaining records for one of our key clients and adapting processes where required
• Maintaining US IDS records for a patent family
• Assisting Attorneys in obtaining information from EPO, UKIPO, EUIPO, WIPO and other IP related websites and databases
• Preparing reports to clients in respect of UKIPO and EUIPO surveillance notifications, and EUIPO Search Reports
• Reporting grants of protection of designations of International Registrations
• Assistance with assignments, changes of name/address and other recordals, including obtaining/collating information on requirements/costs, preparing documents (e.g. Powers of Attorney) for execution by clients, preparing forms/instructions to overseas associates, monitoring progress of recordals and reporting to the client
• Preparing basic correspondence/emails to clients, IP offices and overseas agents
• Preparing standard reporting letters to clients
• 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. Including:
  • Typing and amending Word documents with technical content
  • Preparing forms and letters from templates with case-specific information

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

Desirable skills/knowledge/expertise:

• Working knowledge of PowerPoint advantageous
• Any experience of Inprotech Database system advantageous, although systems induction training will be provided

Desirable but not essential:

• 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.