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Paralegal (Trade Mark)

We are currently recruiting for a Paralegal to join our IP team in London!

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Type

Permanent - Full Time

Location

London

Job Role

Business - Intellectual Property



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About Withersworldwide

Withersworldwide has been acting for successful individuals, businesses and institutions for 125 years. We advise clients on their business, personal and philanthropic needs both at home and abroad. In this fast moving and increasingly regulated world the need for integrated and timely advice has never been more urgent.

We are recognised as the leading international law firm for successful people. With offices in Europe, Asia, the United States and the Caribbean we provide coverage across the world that other law firms focussed on the individual cannot. We have represented 70% of the Top-100 ‘Sunday Times Rich List’, as well as a significant number of people listed in the US (Forbes) and Asian (Hurun) Rich Lists.

The firm consists of three global legal Divisions: Business; Dispute Resolution and Private Client & Tax. Each Division is headed by a Divisional CEO and Divisional Operating Officer, working with the CEO of the global firm

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 (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 Local Globe and Stride Capital 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

The role will involve providing administration support and assistance to the Trade mark attorney 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 on time in a timely manner.

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

Trade mark administration and portfolio management

  • Updating and maintaining trade mark and dispute files on WebTMS – 2000+ TM records and 200+ dispute records (and some RCDs)
  • General portfolio maintenance, e.g. updating registered address, noting any inconsistencies with fee earners, receiving and dealing with official correspondence, Inputting maintenance deadlines (renewal / declarations of use / non-use deadline etc); reminding clients/fee-earners of relevant deadlines in good time; dealing with renewals and other general maintenance and assisting with amendments to specifications; assisting with completing and filing forms, running reports and searches
  • Receiving incoming and outgoing correspondence and docketing deadlines and key information. Working closely with the legal team to develop, implement and maintain docketing processes
  • Assisting team with on-boarding of new client trade mark portfolios
  • Assisting senior lawyers with drafting fee estimates for trade mark filings and putting together advice regarding trade mark filing strategy
  • 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 parties and 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
  • Maintaining client folders on system: filing emails and documents (including correspondence files for contentious matters)
  • Taking notes of meetings / calls and updating WebTMS / filesite
  • Liaising with support teams, e.g. with Library team re press searches
  • Assisting with IP due diligence exercises

IP department administration

  • Receiving all IP-related disbursements from third parties, reviewing bills received to ensure that these are in line with fee estimates and taking responsibility for posting to relevant files
  • Working with our business teams to assist with client set-up/administration and financial management.
  • Liaising regularly with the IP Team Secretary and Withers' Accounts Team regarding billing / disbursements, including reviewing billing guides; updating billing and narrative summaries; dealing with third party disbursement only invoices, reviewing draft client bills
  • Dealing with client and third party billing queries
  • Conflict checks, client matter set up, DD and engagement letters

Skills and experience required

  • Previous experience with trade marks in an IP environment is preferred
  • Knowledge of WebTMS / IPPO or other trade mark management database
  • 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

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.

The essentials

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

For further information, please contact the recruitment team.

 

Information for Recruitment Agencies

Withersworldwide endeavours to recruit and fill vacancies directly. However, when we do need to engage with agencies, Withersworldwide 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 Withersworldwide 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 ethnic origin, religion, sex, age, sexual orientation or disability.

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