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6 months ago
Mishcon de Reya LLP
Location: London
Job type: Permanent
Category: Paralegal Jobs
The Firm

Founded by Victor Mishcon in a one-room office in Brixton in 1937 we now have offices in London and New York, employ more than 800 people, with over 500 lawyers offering a wide range of legal services to companies and individuals. In every area of the law that we operate, Mishcon de Reya LLP prides itself in providing a best in class service to its clients. Specifically we offer the following legal services: corporate; dispute resolution; employment; family; private client; and real estate. An entrepreneurial spirit - where candour and involvement are key - characterises our ability to develop and execute the strategies required to achieve our clients’ goals in all these areas. We are an independent firm with an international footprint that extends far beyond our offices in London and New York.

The Group

The services provided by our Brands team encompass the full life cycle of a brand, from creation through to protection and enforcement. We are experts in trade mark and design filing but we go beyond this. We add value to businesses by playing a strategic advisory role – finding the right legal strategy to best support your commercial strategy.

We operate across four key areas – clearance (including acquisition), monitoring, disputes, and domain names – working in tandem with our IP litigation and commercial contracts teams. We have strong relationships with industry bodies across a variety of sectors and work closely with the UK and EU Intellectual Property Offices and the World Intellectual Property Organisation.

Job Profile

This role is a fantastic opportunity for someone who is looking to grow within a trade marks practice. This will suit either a candidate looking to grow their trade mark experience, or an experienced Paralegal who may have completed their LPC and is now looking to begin their career within trade marks.

The Paralegal will spend their time on the duties noted below in relation to trade marks and designs, supporting the trade mark team, as well as other members of the wider IP team as and when required. In doing this the Paralegal will be required to work independently as well as part of a team. Excellent written and verbal communication is a pre-requisite as are organisational and prioritising skills. The onus is on the Paralegal to spell check work and proof read documents before presenting them to the relevant fee-earner for signature.

Diary management is a key element of the role and in carrying out this duty; the Paralegal will often have to liaise with clients directly. The jobholder will be responsible for managing follow-up arrangements and carrying out appropriate actions where required.

The Paralegal will be the main point of contact for enquiries relating to the portfolios that they support both internally and externally with clients.

This is a rare opportunity for someone to gain experience with direct client contact so excellent interpersonal skills, as well as accurate written and verbal English language skills are essential. The Paralegal will also have a chargeable hours target so the ability to capture and accurately record time on formalities tasks is essential.

Duties and Responsibilities

Pre-Filing

* Assisting with pre-filing searches, including instructing outside search agency, follow up and manage search turnaround timeframes.
* Assisting with online research into third party marks.
* Research PoA requirements within input from local attorneys, collate PoAs and input relevant information.
* Prepare estimates for TM filings.
* Review whether countries are single/multi class.
* Research and collate necessary documents for priority filings.
* Verify foreign filing requirements, e.g. filing basis etc.

Filing

* Prepare application forms/filing instructions; review Solicitor/TMA's pre-filing correspondence to obtain relevant details; check form/instructions carefully before passing to Solicitor/TMA for final check.
* Finalise and file forms/filing instructions.
* Proactively prepare and send off filing reports without Solicitor/TMA prompting.

Prosecution

* Monitor status of application in electronic diary, including adding country specific expected timeframes for various stages of prosecution, pro-actively prepare and send emails to local attorneys to follow up where appropriate without Solicitor/TMA prompting.
* Respond to basic specification objections, including review Solicitor/TMA report to client, check client's instructions and draft appropriate response to IPO.
* Prepare and file EOTs.

Publication and Registration

* Proactively prepare and send reports of publication without Solicitor/TMA prompting.

Deadline Management

* Have a broad understanding of how long tasks take and will follow up with Solicitor/TMA appropriately before, up to, and including meeting of the deadline. Works in conjunction with the TMA to actively manage the diary.
* Wait for written confirmation that the deadline has been met each day before removing the deadline from the docket.
* Review and interpret all incoming and outgoing correspondence for relevant deadlines. Adds hard deadlines, client deadlines and appropriate reminders without prompting from Solicitor/TMA.
* Appropriately manages any discrepancies in deadlines in incoming and outgoing correspondence.

Disputes

* Prepare reports of opposition/cancellation timetable.
* Prepare cooling off/suspension requests.
* Support Solicitor/TMA in collating evidence of use, evidence of registration in other jurisdictions.
* Prepare and check exhibits when filing evidence.

Renewals

* Proactively review diary and prepare and send renewal reminder to client without Solicitor/TMA prompting.
* Proactively review diary and issue reminder statements to client at appropriate timeframes without Solicitor/TMA prompting.

Trade Mark Maintenance

* Recording licences, assignments, and other registrable transaction; has knowledge of UK and OHIM formalities requirements for recordal and will collate necessary information from the client, prepare and file recordal forms.
* Opening and scanning post.
* Filing correspondence.
* Co-ordinate and schedule meetings, appointments, conference calls and similar.
* Updating client TM reports, consistently adhere to client specific requirements for customised reports.
* Monitor and circulate updates in UK and OHIM TM practice.
* Circulate updates in foreign TM practice when received from local attorneys.
* Circulates practice updates to the team.

Deadlines

* Takes responsibility for reminding the TMA of the entries on their diaries for the day, week and monthly deadlines.
* The TMA should be advised daily on what is on the diary for each day - both reminders (i.e. status checks) and statutory deadlines.
* Account must be taken of time differences, bank holidays (in the UK and abroad), OHIM's, WIPO's and the UKIPO's closed days and team holidays when advising TMAs on deadlines.
* Chase the TMA each day if a deadline has not been met.

* Before the end of the day, the job holder is responsible for the deadline(s) have been met; or
* clear instructions have been received from the TMA that the deadline will not be met or can be moved on in the diary (and email is required if the deadline is not being met).
* The information for the diary entry to the Paralegal is to be clear, precise, detail-oriented and accurate.

General

* Demonstrates a professional demeanour internally and externally with clients.
* Corresponds directly with agents and clients.
* Works closely with the Solicitor/TMA to manage their correspondence.
* Turns work around consistently within timeframes set by team guidelines.
* Pro-actively identifies Paralegal tasks from correspondence regardless of whether emails/post are addressed to Paralegal or Solicitor/TMA.
* All forms, specifications, and correspondence to be checked by the paralegal for spelling mistakes, typos, and consistency with client's instructions before passing to Solicitor/TMA for second check. Solicitor/TMA rarely identifies errors or omissions.
* Ensures the relevant references are added to all emails.
* Demonstrates flexibility when completing tasks during busy periods.
* Adapts communication style to appropriate audience.
* Take full responsibility for work quality and completion.
* Proactively identifies relevant deadline/timeframe for completion when not supplied by Solicitor/TMA/client.
* Timely follow up on all draft correspondence left with Solicitor/TMA and uses initiative to progress matters and initiate meetings where required.
* Pro-actively seek out further work when he/she has capacity and will always keep him/herself fully occupied.

Person Profile

* Minimum of one years' experience either within a trade marks practice or strong Paralegal experience with an interest in trade marks.
* Ability to carry out all aspects of trade mark and design formalities work accurately.
* Excellent interpersonal/communication skills, with the ability to build strong relationships both externally and internally across the Firm.
* Ability to stay calm and work well under pressure.
* Ability to prioritise workload and demonstrate flexibility when required.
* Ability to take ownership of formalities management.
* Basic working knowledge of the trade mark application processes.
* Excellent attention to detail and diligent management of deadlines.
* Ability to work independently without supervision, as well as being able to work as part of a close team.
* Flexible and proactive approach with a ‘can-do’ attitude.
* ITMA Trade Mark Administrators Certificate.
* Thorough knowledge of IPPO (webTMS) required.
* Knowledge of Saegis and Serion desired but not essential.

Please note that this job specification is not an exhaustive list of duties but merely an outline of the key components of the role. There may be additional responsibilities required as and when requested.

Diversity & Inclusion lie at the heart of our core values. At Mishcon de Reya, our aim is to promote and foster a culture which embraces diversity, respect for the individual and the expression of talent, to empower individuals to fulfil their, and the firm’s, potential. In order to support this, we recognise the importance of flexible and agile working and are open to having conversations on how this could work for you and our business.

#LI-PARA #LI-ENTRY

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