IP Paralegal - Annuities & Renewals

Caselton Clark; Lombardia; Hybrid; EUR 38,000 - 52,000; Full time

Job summary

Caselton Clark is seeking an IP Paralegal specializing in Annuities & Renewals in Milan. The role involves managing global renewal deadlines, processing annuities, and maintaining client portfolios on official IP registries.

The candidate should have 2+ years of IP paralegal experience, proficiency with major IP management systems, and fluent Italian with strong English for international communications. Hybrid/off-site options are available.

Qualifications

• 2+ years of experience as an IP Paralegal or Formalities Officer, focused on patent annuities and renewals.
• Hands-on proficiency with major IPMS (Anaqua, FoundationIP, CPA Global/Clarivate, Inprotech).
• Fluent Italian and strong English for international correspondence.
• Exceptional attention to detail and strict deadline discipline.

Responsibilities

• Docketing & deadline management across UIIM, EPO/EUIPO, and international registries.
• Annuity processing and execution including payments via official portals.
• Generate fee forecasts and client status reports for portfolio management.
• Verify invoices and maintain accurate records in IPMS.

Skills

Docketing

Annuities

IP Management Systems

Italian/English bilingual

Attention to detail

Tools

Anaqua

FoundationIP

CPA Global/Clarivate

Inprotech

MyEPO

WIPO ePCT

Job description

Role: IP Paralegal – Annuities & Renewals Specialist

Location: Milan, Italy (Hybrid/On-site options available)

Employment Type: Full-time

About the Firm

Our client is one of Italy's premier Intellectual Property firms, renowned for excellence in patent, trademark, and design protection, as well as IP litigation and technology consulting across international markets. With a legacy built on technical precision and legal rigor, their multidisciplinary team supports global corporations, research institutes, and innovative SMEs in safeguarding critical technology assets.

They are currently seeking a detail‑oriented IP Paralegal specialising in Annuities & Renewals to join their established administrative team.

Position Summary

This role plays a vital part in safeguarding the global patent and trademark portfolios of international clients by ensuring seamless deadline management, fee processing, and official register maintenance.

Key Responsibilities

• Docketing & Deadline Management:
  • Monitor global renewal and maintenance fee deadlines, grant anniversaries, and grace periods across Italian (UIBM), European (EPO/EUIPO), and international registries (WIPO, USPTO, and foreign jurisdictions).
  • Maintain accurate data within the internal Intellectual Property Management System (IPMS), ensuring all renewal receipts, official filing records, and status updates are logged immediately.
  • Flag upcoming due dates, calculate grace period surcharges where applicable, and uphold zero‑error docketing standards.
• Annuity Processing & Execution:
  • Issue advance renewal reminder notices and portfolio summaries to clients, foreign associates, and internal attorneys to secure necessary instructions.
  • Execute direct maintenance fee payments through official patent and trademark portals.
  • Coordinate with third‑party annuity payment vendors, foreign associate law firms, and local agents to instruct and confirm payments across overseas jurisdictions.
• Reporting & Portfolio Support:
  • Generate upcoming fee forecast reports and cost projections for clients to support annual budgeting and portfolio pruning decisions.
  • Prepare official certificates of renewal, payment confirmations, and client status statements upon completion of maintenance procedures.
• Financial Administration & Verification:
  • Reconcile incoming vendor and registry invoices against internal records to guarantee accurate client billing.
  • Verify chain‑of‑title records (assignments, ownership updates, address changes) prior to executing renewal fee payments.

Candidate Profile

• Experience: 2+ years of dedicated experience as an IP Paralegal or Formalities Officer, with a proven background in managing patent annuities and renewals.
• Systems Knowledge: Hands‑on proficiency with major IP Management Systems (e.g., Anaqua, FoundationIP, CPA Global/Clarivate, Inprotech) and official online filing portals (MyEPO, WIPO ePCT, UIBM).
• Languages: Fluent in Italian and strong professional working proficiency in English (written and spoken) for international client and foreign agent correspondence.
• Key Attributes: Exceptional attention to detail, strong organisational skills, strict adherence to deadlines, and an analytical approach to record‑keeping.