Trademark Paralegal

Kilburn & Strode; Greater London; On-site; GBP 28,000 - 42,000; Full time

Job summary

Kilburn & Strode is seeking a Paralegal to join the Trade Marks practice in London. You will work directly with fee earners, supporting UK, EU and international filings and client queries in a fast-paced environment.

Responsibilities include managing trade mark applications, document gathering, witness statement exhibits, and ensuring deadlines are met while maintaining high standards of accuracy and confidentiality.

Qualifications

• Solid background working as a Paralegal in a Trade Marks team.
• Completion of the CITMA Paralegal Course.
• Up-to-date knowledge of UKIPO / EUIPO / International Trade Mark procedures.
• Exceptional attention to detail.
• Excellent English, written and spoken.
• Strong research and organisational skills.
• Ability to work at pace.

Responsibilities

• Process, check and report all stages of a trade mark application.
• Prepare and file UK, EU, International and foreign national trade marks and designs.
• Attend to client queries regarding their portfolio.
• Assist with the management of large client portfolios and recordal projects.
• Gather exhibits for witness statements.
• Prepare responses to official objections/provisional refusals.
• Prepare and file opposition notices and other formalities around oppositions.
• Prepare and file all varieties of recordal forms.
• Monitor multiple diaries to meet deadlines and remind clients.

Skills

Paralegal experience

CITMA Paralegal Course

UKIPO/EUIPO knowledge

Attention to detail

Research skills

Organisational skills

English proficiency

Education

CITMA Paralegal Course

Job description

The patent and trade mark attorney sector is unusual.

In some ways, the firms are like other private practice firms. They provide advice and services to their clients. They’re also usually partnerships with practice groups of trainees, associates and partners working alongside expert colleagues in business support teams. And the best firms have a sharp focus on client relationships, top quality work, hiring and looking after the very best people.

But they’re also different. They are focussed solely on patents and trade marks, and so their clients are drawn from the world’s most innovative technology companies and brand owners. Being specialists, the top firms in this sector are much smaller than the leading private practice firms; but they’re nevertheless highly profitable. And the attorneys who work in them aren’t solicitors. Instead, they’re scientists or engineers.

Kilburn & Strode is a top European intellectual property firm, headquartered in London, with offices in the US, Germany and the Netherlands. For more than 100 years, we have been trusted to provide strategic IP advice and navigate the complex world of IP for an impressive roster of clients of all sizes, including leading brands and some of the world’s most impressive innovations.

Whether obtaining protection, clearing the path or defending key technologies; we offer a unique combination of experience, technical expertise and, most importantly, an approach that makes us a true extension of our clients’ teams. We have technical, legal and commercial nous second to none and we combine this with an attitude that makes working together easy.

The opportunity

The role of the Paralegal is an integral part of the firm’s Trade Marks practice.

You will work directly with two of the fee earners in the team, and may support other fee earners when the need arises as well as the wider support team. You will play a key role in delivering an excellent service, providing valuable input in a challenging, fast-paced but rewarding environment.

You will provide an outstanding level of support to the fee earners by responding in a timely manner to all matters

This is a very varied role that can include:

• Processing, checking and reporting all stages of a trade mark application
• Preparing and filing UK, EU, International and Foreign national trade marks and designs
• Attending to client queries regarding their portfolio
• Assisting with the management of large client portfolios and recordal projects
• Gathering exhibits for witness statements
• Preparing responses to official objections/provisional refusals
• Preparing and filing opposition notices, extensions of time and all other formalities revolving around oppositions
• Preparing and filing all varieties of recordal forms
• Monitoring of multiple fee earner and team diaries to ensure deadlines are met. This means entering, managing, checking deadlines, diarising reminders, taking accountability for management of dates and review of forthcoming dates, calendar/meeting organisation and sending reminders to clients
• Handling post, preparing reporting letters / emails, responding to enquiries
• Identifying urgent matters and chasing or assisting the relevant fee earners as required
• Handling billing, checking estimates; dealing with enquiries from accounts on discounts / client-specific procedures, responding to general accounts enquiries from clients, and preparing cost estimates

General responsibilities will include

• Ensuring the safe and confidential storage of information and records according to data protection requirements, and ensure all such data are kept up-to-date and accurate as required
• Managing and control of any budget allocation in order that activity can be monitored and evaluated appropriately
• Maintain effective working relationships with colleagues, suppliers and advisers
• Contribute proactively and willingly to bringing to life the Firm’s culture and values

Essential knowledge, skills and experience

• A solid background working as a Paralegal, having already supported Partners and fee earners within a Trade Marks team.
• Completion of the CITMA Paralegal Course
• Up-to-date knowledge of UKIPO / EUIPO / International Trade Mark procedures
• Exceptional attention to detail
• Outstanding accuracy and use of English (spoken, written, spelling, grammar)
• Strong research and organisational skills
• Ability to confidently work at pace

Person specification

• Stand-out approach to client care, whether external clients or internal colleague clients
• Able to assimilate information and instruction quickly and deliver results
• Able to manage upward; confident liaising with the most senior members of the Firm
• Reliable, consistent: strong at multi-tasking, prioritises workload to meet targets and deadlines; manages multiple priorities and adapts quickly to changing requirements
• Proactive improvement-orientation; able to self-motivate and use initiative by identifying tasks, projects and/or problems in advance, creating solutions and taking ownership of outcomes as appropriate
• Adaptable, resilient: incorporates feedback, transfers knowledge across situations, manages varied/heavy workload
• Great team skills and excellent communication skills to maintain positive working relationships

Our commitment

Fiercely committed to diversity and social responsibility, we created the Innovation for All Foundation, which donates 1% of our annual profits to up-and-coming innovators. We were one of the first signatories of the IP Inclusive Charter, making a public commitment to supporting and promoting equality, diversity and inclusion in the IP professions.

Kilburn & Strode is one of just a handful of leading IP firms in Europe ranked in the top tier for both trade mark and patent prosecution in each of the Chambers and Partners, Legal 500, Managing IP, IAM Patent, and the World Trade Mark Review listings.