Trade Mark Paralegal

About Withersworldwide

A law firm focused on people and collaboration. For the past 125 years, Withers has supported some of the world's most remarkable people and organisations at defining moments in their lives. We are the only international law firm focused on successful individuals and private capital, working closely with founders, investors and family offices. We also advise governments, charities, global brands and start-ups of all shapes and sizes. Many of our clients are shaping the future and creating solutions to tackle many of the world's problems.  It makes for a fascinating and challenging practice. Our role is to get to know each individual client, find out where they want to be, and help them to get there – whether they are building a business, looking after their family, involved in a complex dispute or protecting their finances for the future. To meet their unique needs we are exceptionally collaborative, working together across teams and time zones. We are agile, focusing on strategy rather than rigid ideas and traditional hierarchy. It is a truly flexible working culture that puts people first. Join us to be part of a team that is always looking to the future. Where initiative, big ideas and bold moves are always encouraged. Where you can truly be yourself.

About Withers tech

As from August 2018, Withersworldwide merged with JAG Shaw Baker to form Withers tech, a unique legal offering designed to meet the needs of entrepreneurs, investors and technology companies around the world. Withers tech is a global venture capital and technology legal practice serving disruptors and innovators in the technology and life sciences sectors. Our experts operate out of the firm’s core territories in Europe (London, Cambridge and Milan), the US (Boston, San Francisco, Los Angeles and New York), and APAC (Singapore and Hong Kong), offering a global solution to clients seeking to scale and expand internationally.

The Withers tech team has been at the centre of the UK's thriving technology and venture capital sector for over a decade, advising on some of the most high-profile funding rounds in that time, involving companies such as Transferwise, Soundcloud, Habito and Revolut. On the investor-side, the team acts for many of the best-known venture capital funds such as Molten Ventures and Local Globe both in the UK and globally, with specialist teams in the US and APAC.

Having been established with the mission of supporting and driving the growth of the innovation economy, Withers tech is responsible for driving forward the convergence of innovation and technology with other practice areas within Withersworldwide. Our lawyers support firm-wide global initiatives addressing the rapidly changing landscape of 'traditional', long-established sectors which historically have been slower to adopt innovation such as Real Estate, Hotels & Hospitality, Fashion & Luxury Brands and Sport. We also help drive forward social impact investment and innovative funding strategies for family offices, charities and philanthropic donations.

The Role

We are currently recruiting for an experienced Trade Mark Paralegal who will provide support and assistance to our Trade Mark Attorneys and other fee earners. Direct client exposure will be involved, and the candidate will have an opportunity to liaise with third party agents and correspondent law firms. Candidates should preferably have experience of juggling a high volume of work in different client teams. Whilst they will be supervised, they need to be able to work independently, progressing their workload without reminders and ensuring that they deliver on their tasks in a timely manner.

Key areas of focus (this is not an exhaustive list)

Trademark administration and portfolio management

• Assisting the team with managing and maintaining trade mark prosecution and dispute files on WebTMS – 2500+ TM records and 200+ dispute records (and some RCDs)
• General portfolio maintenance, e.g., updating registered address; noting any inconsistencies with fee earners; assisting with office actions and amendments to specifications; assisting with recording assignments; completing and filing forms
• Taking responsibility for all aspects of renewal and maintenance deadlines, including liaising with clients, fee earners and overseas agents
• Assisting with preparing forms and evidence for oppositions, cancellation actions, etc
• Carrying out trade mark searches, producing search reports and assisting with advising on trade mark filing strategy
• Receiving incoming and outgoing correspondence and docketing deadlines and key information.
• Working closely with the legal team to develop, implement and maintain docketing processes
• Corresponding with clients and overseas attorneys in respect of upcoming deadlines
• Assisting team with on-boarding of new client trade mark portfolios
• Generating reporting letters to clients and assisting legal team with providing updates to clients
• Reviewing trade mark watch notices and assisting fee earners with reports for clients

General IP

• Research into client and/or third-party IP rights and providing reports to fee earners (e.g., WHOIS searches, TM searches, press, Companies House, general online searches etc)
• Drafting bundles to accompany instructions to counsel and updating hard copy correspondence bundles for litigation
• Liaising with support teams, e.g., with Library team re press searches
• Assisting with IP due diligence exercises

IP department administration

• Working with our business teams to assist with client set-up/administration and financial management, including assistance with billing and disbursements

This list of duties and responsibilities is not exhaustive.  The role may also include the undertaking of additional administration as required from time to time.

Skills and experience required

• Previous experience with trade marks in an IP environment
• Previous experience with conducting trade mark searches and producing search reports
• Knowledge of WebTMS / IPPO or other trade mark management databases
• Ability to manage workload and prioritise tasks
• Excellent written and verbal communication skills
• Ability to work as part of a team and under pressure
• Good workload management, prioritisation and time management skills

The essentials

• 9.30 – 5.30pm but flexibility is a must
• 12-week probation period
• 4 weeks' notice period
• Flexible benefit package

For further information, please contact recruitment team.

Information for Recruitment Agencies

We endeavour to recruit and fill vacancies directly. However, when we do need to engage with agencies, we operate a preferred supplier list ('PSL') and will not be accepting unsolicited applications from non-PSL agencies for this role.

Equal Opportunities Employment Statement

It is our policy to provide equal opportunities for all employees/prospective employees in relation to recruitment, training and promotion.  Decisions in these areas will be made only by reference to the requirements of the job and shall not be influenced by any consideration of ethnic origin, religion, sex, age, sexual orientation or disability.

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