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IP Paralegal

2 weeks ago

London, Greater London, United Kingdom TN United Kingdom Full time

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 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

Broad knowledge of trade mark and design filing and prosecution requirements.

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

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

Good systems experience, i.e., Word, Excel and PowerPoint.

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

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

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

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

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

Excellent communication (oral and written).

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.

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