To support our UK trademark prosecution practice, working with colleagues across the UK and internationally. Core work will include preparation and filing of trademark applications and registry disputes, assistance with trademark prosecution tasks, matter management, docketing of deadlines, diary management, renewals and billing.
MAIN DUTIES AND RESPONSIBILITIES
The role includes practice development, administrative and fee-earning/income generating elements. Not all elements listed below may be always required, and so a degree of flexibility will be essential. It may also require the undertaking of additional tasks and administration not listed below as required by the practice from time to time:
Practice administration and management:
- Handling, reviewing and interpreting correspondence from trademark registries and overseas lawyers, including docketing of any relevant deadlines
- Diary/docket management
- Updating and auditing of records on our trademark management system, and generating reports from the system
- Managing current accounts with trademark offices and assisting with the invoicing of trademark files
- Assisting generally with the management of global trademark portfolios, including responding to client queries
- Working with other trademark paralegal staff
- Effectively implementing and maintaining established processes
- Conflict checks, client matter set up, due diligence and engagement letters.
- Preparing and filing trademark applications and registry disputes (including opposition and cancellation actions) under instruction from our lawyers/attorneys
- Monitoring the status of trademark applications and oppositions and pro-actively engaging with our lawyers/attorneys, and with external local attorneys
- Preparing standard and bespoke reporting communications in a timely and accurate manner, including reporting filing receipts, publication notices and registration certificates
- Preparing draft responses to basic registry objections, including specification queries and cited rights issues
- Pro-actively managing renewals and maintenance requirements, including requesting instructions from clients, and filing renewal applications
- Preparing documentation for recorded requests relating to trademark rights (including of changes in company names, company addresses, and assignments/licenses)
- Managing trademark watch services, reviewing watch notices received and drafting reports to clients
- Liaising with and delivering an excellent service to clients
Internal practice development and change:
- Working with other members of our team in relation to the continued development of our processes, procedures, and materials to ensure we deliver first rate client service combined with efficient internal administration
- Working with colleagues in other countries to facilitate the smooth operation and growth of the firm’s international trademark practice
- Liaising with business process expert colleagues in relation to the use and development of technology tools to drive efficiency and quality, including the development of applications for Robotic Process Automation.
- Assisting with business development opportunities, including analysis of trademark portfolios to identify further growth opportunities
- Assisting with the on-boarding of new client trademark portfolios
- Preparing fee estimates for trademark filings
- Previous trademark experience from a trademark attorney firm, law firm or in-house and a desire to build a career as a trademark paralegal
- CITMA Paralegal qualification is preferred but not essential
- Experience with all aspects of trademark (and ideally also design) formalities work
- Thorough understanding of trademark processes of the UKIPO, EUIPO and WIPO
- An appreciation of the importance of effective deadline management
- Ability to manage workloads under pressure and to prioritise tasks
- Ability to work independently without supervision and as part of a collegiate and supportive team in a fast-paced environment
- Someone who takes a holistic and pro-active approach to trademark management and has a keen eye for detail
- Excellent written English and grammar
- IT literacy including competence in creating visually pleasing and effective documents in Word and Excel, proficiency with the use of internal financial systems, and ability quickly to learn to use portfolio management systems
- A desire to contribute to practice development and change
- A wish to be involved proactively in the application and use of new technologies for portfolio management work
- A desire to deliver excellent client service
- A flexible approach
DLA Piper is a global law firm with lawyers and business service professionals located in more than 40 countries throughout the Americas, Europe, the Middle East, Africa and Asia Pacific. Our global reach ensures that we can help businesses with their legal needs anywhere in the world. We strive to be the leading global business law firm by delivering quality, service excellence and value to our clients and offering practical and innovative legal solutions to help them succeed. Our clients range from multinational, Global 1000, and Fortune 500 enterprises to emerging companies developing industry-leading technologies, as well as government and public sector bodies.
In everything we do connected with our People, our Clients and our Communities, we live by these values:
- Be Supportive – we are compassionate and inclusive, valuing diversity and acting thoughtfully
- Be Collaborative – we are proactive, passionate team players investing in our relationships
- Be Bold – we are fearless and inquisitive, challenging ourselves to think big and find creative new solutions
- Be Exceptional – we are strategic and driven, exceeding standards and expectations
DIVERSITY AND INCLUSION
At DLA Piper, diversity and inclusion underpins how we live our values and everything we do. We believe that everyone has a voice, and that everyone’s voice counts. We know that the rich diversity across our firm makes us stronger, more innovative and creative, which helps us to better serve our clients and communities. We are committed to providing an inclusive working environment and culture across our global firm, where everyone can bring their authentic self to work.
Diversity of perspective, thought, background and culture combine to make us the leading global law firm; that’s why we actively seek to build balanced teams. We welcome the unique contribution that you will bring to our firm and actively encourage applications from all talented people – however your talent is packaged, whatever your background or circumstance and regardless of how you identify.
We recognise that people have responsibilities and interests outside of their career and that as a business, we all benefit from working flexibly. That’s why we are open to discussing with candidates the different ways in which we are able to support requests for agile working arrangements.
In the event that we make an offer to you, and where local legislation permits and where relevant, we will conduct pre-engagement screening checks that may include but are not limited to your professional and academic qualifications, your eligibility to work in the relevant jurisdiction, any criminal records, your financial stability and work-related references.
817 | United Kingdom | London