Reporting to: IP Paralegal Services Manager and Trade Mark Partner

Working for: Head of Trade Marks, Trade Marks Partners and Trade Mark Fee Earners

Location: The principal place of work will be the Firm’s Brighton office.

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

Purpose of role: To provide a full support service to our Trade Mark Attorneys and work as part of an overall team to ensure a high level of support is delivered across the Brighton office and the Firm as a whole.

Career development: This role offers a unique opportunity to transition into a Trainee Trade Mark Attorney position for the right candidate who demonstrates exceptional aptitude and dedication.

Job Specification:

• Assisting fee earners in obtaining information from UKIPO, EUIPO, WIPO and other IP related websites and databases
• Preparing and processing Trade Mark forms for submissions to the UKIPO, EUIPO and WIPO
• 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 client
• Preparing correspondence/emails to clients, IP offices and overseas agents
• Preparing reporting letters to clients
• Assistance with Trade Mark filing programmes, including:
  • Obtaining and collating information relating to filing requirements and costs
  • preparing instructions to overseas agents
  • Obtaining/preparing documents for execution by clients, checking executed documents received from client and forwarding to overseas agents where appropriate
  • Preparing application forms (UK, EU and International)
  • Preparing reminders/follow-up emails to clients/overseas associates/IPOs, as required
• Processing and forwarding of notices received from our Trade Mark watch provider and dealing with incoming client enquiries relating to the watching service
• Adding official fees and firm service charges to our internal billing system
• Generating cost billing worksheets for invoicing purposes
• Preparation of cost estimates for clients
• Preparing portfolio reports for clients and working with take over portfolios
• Running status reports and portfolio schedules as and when required by clients
• Gathering commercial information on clients or potential clients
• Dealing with signature, notarisation and legalisation of documents
• Requesting new files and checking that files have been set up correctly on Inprotech
• Updating Inprotech records as required (e.g. adding logos, updating specifications etc)
• Liaising with central Records Department and taking necessary action in respect of deadlines wherever appropriate
• Preparation of invoices.

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
• An interest in trade marks and the related law

Essential skills/knowledge/experience:

• Very high attention to detail.
• Good word processing skills
• Good working knowledge of Microsoft Word, Excel and Outlook (2010)

Desirable skills/knowledge/experience:

• Experience or knowledge of trade mark law advantageous but not required
• Experience or knowledge of Inprotech Database system and Serion/SAEGIS advantageous but not required.

Qualifications:

• Applicants must hold a minimum of a 2:1 degree (or equivalent)

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.