Intellectual Property Executive

Withers KhattarWong

Job title:          Intellectual Property Executive

Team:              Intellectual Property

Location:         Singapore

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.

What are We Looking for?

We are looking for an experienced Intellectual Property (Trademarks/Patents) Executive to join our well established and experienced team.  The prospective candidate will work seamlessly across the full spectrum of our IP practice and will take responsibility for providing specialist support on Intellectual Property matters, including due diligence on portfolios, Intellectual Property litigation matters coordination of foreign trademarks as well. The role will at times be demanding and fast paced so you will need to be an efficient worker who can prioritise, multi-task and remain calm under pressure.  

Areas of focus and responsibilities

• Working with attorneys preparing evidence on enforcement and prosecution matters.
• Opening new matters for tracking purposes.
• Other project management tasks as required from time to time.
• Preparing deadline reports for clients
• Drafting filings and instructions for global trademark portfolios
• Working with attorneys on corporate due diligence and global trademark assignment projects
• Managing requests from agents
• Organizing documentary requirements for different jurisdictions, including powers of attorney and certificates, and having these notarized or legalized according to the country requirements.
• Filing trademarks and registered designs in Singapore as a registered user of the IP2SG portal by IPOS
• Liaising with foreign associates on filing trademarks and registered designs overseas
• Administering and monitoring IP portfolios and IP applications and registrations in Singapore and overseas
• Assisting on due diligence reviews of portfolio status.
• Using fee schedules to preparing cost quotations for fee earners
• Assist patent clearance and freedom to operate studies.
• Conducting patent research and preliminary patent searches.
• Preparation of patent applications, filings and renewal applications.
• Assist with global patent prosecution projects.
• Provide effective communication support to the fee earners you work with, and their clients, including close monitoring of post telephone calls to ensure that urgent matters are dealt with accordingly.
• Providing seamless matter-related support, including preparing and sending standard emails and letters, monitoring deadlines, updating our client management database, resolving account queries and assisting in the monthly billing process, communicating with legal staff, clients and support staff, and filing (both electronic and hard copy)
• Responsible for conducting preliminary prosecution for US and foreign patent applications and performing other duties to support the team.
• Preparing correspondence to associate law firms, foreign associates and/or clients.
• Maintaining and monitoring patent database for deadlines and status checks. Communicating with attorneys and clients regarding upcoming deadlines.
• Liaison with patent offices and foreign counsel, updating deadlines and following up as necessary.
• Opening matter files, e-filing, scanning, photocopying, preparing and updating status reports
• Reviewing and processing foreign associate and vendor invoices.
• Together with other secretarial staff and our finance department, you will assist in keeping track of outstanding bills and keeping statements of account up to date and produce reports as and when required.
• During our monthly billing time you will assist with the production of bills using our finance and time recording systems
• Throughout your time with the firm, you will be encouraged to focus on your own skills development needs and seek up-grading training on a continuous basis.

This list of duties and responsibilities is not exhaustive. It is intended to describe the general content of, and requirements for the performance of this job, and as such, the role may also include the undertaking of additional tasks as required.

Skills and Experience:

• Diploma in legal studies or equivalent work experience required.
• 6-8 years of IP practice experience, with particular in-depth knowledge in:
  • trademark search platforms – such as [IP team please complete]
  • trademark clearances and filing, registration practice,
  • IP enforcement, including Working knowledge of trademarks databases, AI and other  IP related software is required.
• Experience and in-depth knowledge regarding U.S. trademark clearance, prosecution and post-registration requirements, in particular
• Experience in trademark filing and prosecution, including familiarity with registration practice, and in-depth knowledge of trademark filing, prosecution and maintenance practices in the USPTO, WIPO, and other major jurisdictions worldwide
• Familiarity with and the ability to update our trademark database which is based on WebTMS
• Experience with handling assignment recordal projects across multiple jurisdictions
• Good working knowledge of legalization requirements in major jurisdictions
• Meticulous with good attention to detail
• Exceptional organizational skills
• Have a clear and succinct writing style
• Be comfortable working to and taking personal responsibility for managing tight deadlines work well as part of a team
• Have good inter-personal skills, both verbally and in writing, whether dealing with colleagues, service providers or clients
• Be pro-active and able to demonstrate initiative

This list of duties and responsibilities is not exhaustive. It is intended to describe the general content and requirements for the performance of this job and, as such, the role may include the undertaking of additional tasks as required.

The essentials

• 9.00am – 6.00pm with flexibility to support our clients business needs
• 21 annual leave days + an annual 'Withers' Day'

• Hybrid work policies for our staff, aiming to achieve our 'business as usual' service to clients, ensuring a culture of trust and respect, as well as adapting to better and more sustainable ways of working 

   

About Withers KhattarWong LLP

Withers KhattarWong LLP is amongst the largest international law firm in Singapore. We are a fully integrated global law firm with lawyers located across five continents in 17 offices. 

Our broad global platform allows us to guide clients through the legal challenges inherent in the ever-changing international landscape. As our client, you will receive quality advice on diverse legal and tax issues through the services of one law firm with a single communication. 

Internationally, we have made a reputation for ourselves as the leading law firm for private capital; our clients include public and private companies founded by successful families, MNCs, financial institutions, international brands, family offices and HNWIs, charities and not-for-profit organisations, amongst others. We pride ourselves for our role in helping our clients achieve success.

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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