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Patent Paralegal

Type: Permanent
Salary: Excellent Salary
Location: London

Owen Reed are recruiting for a Patent Paralegal working for a law firm in London.  The Paralegal must have at least 5 to 10 years experience. 

The Patent Paralegal will work for 1 Partner, 1 Senior Associate, 1 Fee Earner, and their Technical Assistants in the Bio Team.  The Paralegal will provide a full support service to qualified and trainee Patent Attorneys. Work as part of an overall team to ensure a high level of support is delivered across the London office and the Firm as a whole.

Job Specification of Paralegal:
- Maintaining records for fee earner cases in respect of various formalities eg maintaining US IDS records for a patent family.
- Assisting fee earners in obtaining information from EPO, UKIPO, EUIPO, WIPO and other IP related websites and databases
- 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 (eg Powers of Attorney) for execution by clients, preparing forms/instructions to overseas associates, monitoring progress of recordals and reporting to client
- Preparing basic correspondence/emails to clients, IP offices and overseas agents
- Preparing standard reporting letters to clients
- Preparation of documentation relevant to patents, designs and/or trademarks as appropriate and monitoring various formalities processes relevant to the filing of UK, European, International and Patent Co-operation Treaty (PCT) applications. Including:
- Typing and amending Word documents with technical content
- Preparing forms and letters from templates with case-specific information
- Preparation of various documentation and presentations relevant to fee earner involvement in committees and other professional activities.
- Transcribing dictation (Big Hand) is not a requirement of this role, but may be useful in assisting colleagues.
- Dealing with incoming and outgoing communications.
- Preparation and handling of all ancillary documentation as necessary (eg file management, photocopying, scanning etc).
- Instructing overseas agents to attend to filing of new patent, design and trade mark applications (including national phase of PCT applications), to include attending to all filing formalities
- Preparing and/or sending emails on behalf of fee earners.
- Monitoring fee earner deadlines/workloads, liaising with central Records Department and taking necessary action in respect of deadlines wherever appropriate.
- Maintaining fee earner diary.
- Preparation of cost estimates for clients.
- Running status reports and portfolio schedules as and when required by clients.
- Adding official fees and firm service charges to our billing system.
- Preparation of invoices.
- Monitoring of fee earner Work In Progress (WIP) eg unbilled time or service charges wherever appropriate.
- Checking new client details on Inprotech database and updating various other records.
- Maintaining client files with relevant client specific information, eg standard procedures re billing, correspondence etc.
- Arranging fee earner travel as required. Preparation of Travel Itineraries and dealing with expense claims on behalf of fee earner, if required.
- Acting as point of contact for client enquiries on behalf of fee earner. Making and receiving telephone calls and dealing with general enquiries.
- Point of contact when arranging internal and external meetings, booking of rooms, venues and refreshments.
- As required, assisting with ad hoc responsibilities and administrative tasks to support fee earners.

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