IP Paralegal

Job description

Purpose

To provide a full IP protection service (except patents and domain names) for a number of Maisons within the Richemont Group.  Where possible, to pro-actively advise on enhanced methods of protection. 

 

Responsibilities

·  Trade Mark searching, including initial knock out searches
·  Trade mark filings and prosecution – primary contact liaising with foreign counsel
·  Trade mark renewals
·  Trade mark oppositions, cancellations, change of address, assignment etc.
·  Receiving and reviewing watch notices and carrying out first filter to discuss with Maison lawyer
·  Design filings and prosecution; Design renewals
·  Supporting negotiation and drafting of settlement agreements, co-existence agreements and simple assignment and licences
·  Day to day management of design processes
·  Processing of invoices.  Dealing with other general invoicing queries relating to IP protection. Dealing with Master Vendor Data requests
·  Preparation of and providing trade mark and design reports
·  Ensuring integrity of the records database (DIAMS) including keeping the database updated for trade marks, oppositions, agreements, assignments, integrating new portfolios and creating new records
·  Preparing various miscellaneous reports, including budget reports, financial spend reports, monthly enforcement reports
·  Working closely with the Maison lawyer and providing additional support for ad hoc IP queries and research

 

Profile

·  Several years IP filing and prosecution experience in both trade marks and designs
·  Experience in house is mandatory; must have international experience of handling portfolios, including filing via WIPO, not just UK/EU
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Broad knowledge of trade mark and design filing and prosecution requirements.

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Understanding the principals of trade mark searching in order to be able to carry out first level screening.

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Ability to review trade mark watch notices and filter significant ones for discussion with lawyer to decide on potential oppositions.

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Good systems experience, ie Word, Excel and PowerPoint

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High level of attention to detail, task focused, strong organisational/time management skills and able to meet deadlines.

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Ability to think and act quickly, be flexible and agile.

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Motivated to work as part of a team but willing to take initiative when necessary.

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Professional attitude, integrity and discretion are essential given the nature of the Department’s work, as well as ability to communicate appropriately at all levels.

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Ability to manage competing priorities and proven ability to work efficiently and proactively, to work to deadlines and able to take initiative.

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Excellent communication (oral and written).

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Flexible approach to work and working hours.

Business Context

Within a group of 10 in the London Office, the paralegal team consists currently of 2 people to provide searching, filing, prosecution, maintenance and renewal for the London based brands and several Geneva based brands.