Trade Mark Paralegal

We are working with an international law firm in their search for a CITMA Qualified Trade Mark Paralegal with a minimum of 5 years’ experience and solid drafting skills. Key responsibilities * Reviewing Watch Notices, flagging concerns and reporting to clients. * Reviewing and managing all trade mark and design deadlines, including moving and clearing completed deadlines. * Reviewing dockets, adding diary entries and monthly/fortnightly reminders, and responding to dockets with updates and outcomes. * Liaising with clients (by phone and email) on deadlines and obtaining instructions on their trade marks/designs, including Powers of Attorney and notarial requirements. * Liaising with foreign agents to obtain fee quotes, deadlines and required documents, and relaying client instructions. * Preparing filing sheets for trade mark and design matters, including fee quotes and classes of goods and services. * Arranging searches through SAEGIS or Corsearch and reporting results. * Providing clients with their trade mark schedules; preparing IP trackers for various clients and providing monthly updates. * Preparing and filing trade mark applications, renewals and recordals (assignments, change/appointment of representative, etc). * Assisting with the preparation and filing of oppositions, cancellations, revocations and defences thereto, including completion and filing of TM7A, TM7 and TM8 forms; liaising with the UKIPO on withdrawals. * Filing WIPO applications, including MM12 and MM18, and liaising with clients for execution. * Arranging execution of Powers of Attorney (UK or overseas) and liaising with foreign agents. * Liaising with notaries and arranging witnessing and apostilling of documents. * Reviewing office actions, examination reports and irregularity letters; preparing draft advice to clients and responding to the UKIPO or foreign agents with resolutions following instructions.

Person specification * Proven experience within the trade marks team of a recognised law firm. * Excellent interpersonal and stakeholder management skills. * Strong time management skills. * Confident communicator with the ability to influence and build trust at all levels. * Tech-savvy, with proficiency in MS Office. * Proactive, solutions-focused, and able to thrive in a growing, dynamic environment. * Team player, reliable and engaging with all colleagues.

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