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Trade Mark Paralegal / Administrator

Type: Permanent
Salary: Competivice Salary
Location: London

Reporting to : Paralegal Services Manager

Working for :  Head of Trade Mark, Trade Mark Partners and their Technical Assistants

Purpose of role:  To provide a full support service to qualified and trainee Trade Mark 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: 

 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 records 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 

 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. 

 Preparation of various documentation and presentations relevant to fee earner involvement in committees and other professional activities. 

 Transcribing dictation (Big Hand). 

 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. 

 Preparing portfolio reports for clients and working with takeover portfolios 

 Running status reports and portfolio schedules as and when required by clients. 

 Adding official fees and firm service charges to our billing system. 

 Generating cost billing worksheet sheets for invoicing purposes. 

 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 

 Updating records as required (e.g. adding logos, updating specifications etc) 

 Preparation of invoices. 

 Monitoring of fee earner Work In Progress (WIP) eg unbilled time or service charges wherever appropriate. 

 Checking new client details on 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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