Trade Mark Paralegal

About Withers

A law firm focused on people, performance, and collaboration.

For the past 130 years, we have supported some of the world’s most remarkable people and organizations at defining moments in their lives. 40% of our business comes from Europe, 40% from the US and 20% from Asia and we are one profit sharing partnership globally.

We are united in our commitment to integrity, quality and collaboration. We have a culture of high performance and deliver excellent service consistently across the firm. We provide tailored solutions built on trust and partner with our clients to achieve their goals.

Many of our clients are shaping the future and creating solutions to tackle some of the world’s most difficult 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, buying a home or protecting and defending their interests.

To meet their unique needs we are exceptionally collaborative, working together across teams and time zones. And we are agile – focusing on strategy rather than rigid ideas and traditional hierarchy.

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.

The Role

The role of a Trade Mark Paralegal will involve providing 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 and producing search reports 
• 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 
• Flexible benefit package

For further information, please contact recruitment team.

Information for Recruitment Agencies
Withers endeavours to recruit and fill vacancies directly. However, when we do need to engage with agencies, Withers operates a preferred supplier list and will not be accepting unsolicited applications from non-PSL agencies for this role.

Equal Opportunities Employment Statement 
It is the policy of Withers to provide equal opportunities for all 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 age, disability, gender reassignment, marriage or civil partnership, pregnancy or maternity, race (including colour, nationality and ethnic and national origin), religion or belief, sex or sexual orientation.