We
have an exciting opportunity for a Trade Mark Paralegal/Formalities Assistant
to join our IP team in London on a 3month fixed-term contract.
Our
client base includes many leading retail, technology and media companies so
it's not surprising that we are a 'go to' firm for some of the most complex and
novel trade mark/IP questions. The team regularly manage large trade mark/IP
projects and transactions for clients based in Europe, the US and Asia,
providing advice on everything from trade mark strategy and prosecution to
enforcement and licensing issues.
The
team also handles disputes in all forms of intellectual property, whether
through alternative dispute resolution, litigation in the national courts or
the opposition of trade marks at the UKIPO, EUIPO or in the relevant national
offices. We are also an acknowledged leader in growth areas such as digital
transformation, AI, online broadcasting and gaming.
Key
responsibilities
- Preparing and filing trade marks (and renewals and other trade
mark recordals) directly at the UKIPO, EUIPO, WIPO and instructing
overseas agents
- Instructing trade mark searches
- Effectively and proactively managing client portfolios using
WebTMS
- Preparing detailed costs estimates
- Proactively take responsibility liaising with clients and local
agents and reporting on the prosecution of trade marks
- Reviewing incoming and outgoing correspondence to identify key
information, statutory deadlines, timetables for future
activity/requirements and other docketing details
- Running a docketing diary, issuing reminders to the team's
solicitors/trade mark attorneys and ensuring that the diary for relevant
cases is always current
- Due diligence related to trade mark portfolios including auditing
of data from national IPO and other commercial databases
- Trade mark records management - use of the firm's database to
ensure all activity is docketed and able to be audited at all times
- Proactively identify opportunities, actively contribute and be
involved with ad-hoc projects as given by the team
The
team
Our
IP team in London is led by Chambers rated Arty Rajendra. The team comprises 9 Partners,
13 Associates (across all levels), 4 Paralegals (exclusive of this role), a
Formalities Assistant and 2 Trainee Solicitors.
Technical
skills and experience
You
will have experience in trade mark paralegal, formalities and administration
activities including database experience using Web TMS or other similar trade
mark databases. You will also have experience of managing large client
portfolios and liaising with overseas trade mark agents. Excellent IT, written
and verbal communication skills, organisation and time management are also
essential.
The
CITMA paralegal qualification is also highly desirable.
The
candidate
You
will:
- Demonstrate a 'can-do', positive work ethic;
- Be decisive, responsible and take ownership of issues that arise;
- Be flexible and show openness to change;
- Have the ability to remain calm under pressure, demonstrating
prioritisation skills;
- Demonstrate accuracy and attention to detail (in particular
recording data and deadlines);
- Being able to competently produce and format letters and
documents; and
- Be a competent user of various computer packages, Outlook, Word,
Excel.
Salary
and benefits
We
offer competitive salaries and generous benefits.
Our recruitment process
This vacancy is for a temporary Paralegal position, it is not an entry route to a training contract at Osborne Clarke LLP - the two recruitment processes are separate.
We welcome direct applications for our opportunities - if you would like any further information about this role or the firm, we would be delighted to hear from you. Please contact, in complete confidence, Jemma Jackaman at [email protected]
Please note we review and progress applications on a rolling basis. At Osborne Clarke we do not make any recruitment decisions using automated decision-making.
We are committed to providing an environment where you can perform to the best of your abilities at every stage of your recruitment experience and beyond. If you require any adjustments to be made during the application stage, interview process, or when working with us, please let us know in confidence.