Patent and Trade Mark Formalities Specialist

4 weeks ago

London, Greater London, United Kingdom Dehns Full time

Job Summary:

We are seeking a highly motivated and organized Records Administrator/Paralegal to join our team at Dehns. The successful candidate will be responsible for processing all aspects of patent and trade mark formalities, from maintaining electronic case records to contacting clients regarding records information and working with foreign attorneys to execute the work.

Main Responsibilities:

  • Handling various procedures relating to patent, design and trade mark applications including filings, completion reminders, processing official communications, publications, fee payments, grants and certified copies.
  • Handling incoming correspondence from foreign associates and clients including hard-copy mail and electronic correspondence and logging appropriate deadlines and actions onto the firm's IP management system - Inprotech.
  • Reviewing and identifying any due dates from incoming correspondence and diarising said dates in Inprotech.
  • Reviewing outgoing correspondence and updating the firm's IP management system accordingly.
  • Entering details of new cases onto the IP management system ensuring accuracy at all times.
  • Creating new Inprotech Case records, capturing case details from client instructions, diarising any deadlines and making use of the on-line databases such as EPOLine to check case data against information supplied by the client including acknowledging instructions to create a case.
  • Generating and sending out all standard correspondence associated with the responsibilities of this role.
  • To update Inprotech with filing details (this includes checking the details against the filing receipt and arranging for correction, if necessary).
  • Checking information/communications received to ensure information is correct, updating Inprotech with due dates, events and changes in the status of cases e.g. publication, grant/registration, and opposition/refusal/revocation, official actions.
  • Monitoring the daily critical due date list to ensure that Fee Earners are aware of all due dates which require action on the day.
  • Ad-hoc duties to include any other tasks which may be required in order to complete the role to a high standard.

Person Specification:

  • Highly motivated, organised, and efficient.
  • Confident and assured attitude.
  • Excellent attention to detail and accuracy.
  • Must be able to work under pressure, while maintaining accuracy.
  • Must have good organisational skills, ability to multi-task and prioritise to meet strict legal deadlines.
  • Must be able to work independently to a high standard with a strong work ethic.
  • Must be able to communicate at all levels, both in writing and verbally.
  • Must be team-focussed, personable, and approachable.

Desirable Skills/Knowledge/Experience:

  • Knowledge of Inprotech (records system application).
  • 3+ years working within a Records or IP department.
  • Strong knowledge of EP and UK patent and trade mark processes.
  • Proficiency in German language would be desirable.

Qualifications (Desirable but not Essential):

  • CIPA Patent Paralegal Course.
  • CITMA Trade Mark Administrators Course.

This job description describes the principal purpose and main elements of the job. It is a guide to the nature and main duties of the job as it currently stands. It is not intended as a wholly comprehensive or permanent schedule and may be varied from time to time. It does not form part of the contract of employment.

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