Trade Mark Administrator/Paralegal

Dehns; Brighton; On-site; GBP 25,000 - 35,000; Full time

Job summary

A leading firm in the IP sector is seeking a Trade Mark Administrator/Paralegal to support their Trade Mark Attorneys in Brighton. The role involves preparing Trade Mark submissions, client correspondence, and managing records. This position offers a unique opportunity for career development into a Trainee Trade Mark Attorney role for the right candidate.

Qualifications

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

Responsibilities

• Assisting fee earners in obtaining information from IP offices.
• Preparing and processing Trade Mark forms for submissions.
• Generating cost billing worksheets for invoicing purposes.

Skills

Attention to detail

Organizational skills

Ability to prioritize

Team player

Education

2:1 degree or equivalent

Tools

Microsoft Word

Microsoft Excel

Microsoft Outlook

Job description

Dehns, Trade Mark Administrator/Paralegal

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 working knowledge of Microsoft Word, Excel and Outlook (2010)
• 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.

Please mention IP Careers when applying to Dehns.