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
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.