Patent Paralegal

Purpose of role:

To provide a full support service to qualified and trainee Patent Attorneys. Work as part of an overall team to ensure a high level of support is delivered across the Brimingham office and the Firm as a whole.

Job Specification:

• Preparation of documentation relevant to patents, designs and/or trademarks as appropriate and monitoring various formalities processes relevant to the filing of UK, European, International and Patent Co-operation Treaty (PCT) applications. Including:
• Typing and amending Word documents with technical content
• Preparing forms and letters from templates with case-specific information
• Maintaining records for fee earner cases in respect of various formalities eg maintaining US IDS records for a patent family.
• Assisting fee earners in obtaining information from EPO, UKIPO, EUIPO, WIPO and other IP related websites and databases.
• Assistance with assignments, changes of name/address and other recordals, including obtaining/collating information on requirements/costs, preparing documents (eg Powers of Attorney) for execution by clients, preparing forms/instructions to overseas associates, monitoring progress of recordals and reporting to client.
• Preparing basic correspondence/emails to clients, IP offices and overseas agents.
• Preparation of various documentation and presentations relevant to fee earner involvement in committees and other professional activities.
• Dealing with incoming and outgoing communications.
• Preparation and handling of all ancillary documentation as necessary (eg file management, photocopying, scanning etc).
• Instructing overseas agents to attend to filing of new patent, design and trade mark applications (including national phase of PCT applications), to include attending to all filing formalities.
• Preparing and/or sending emails on behalf of fee earners.
• Monitoring fee earner deadlines/workloads, liaising with central Records Department and taking necessary action in respect of deadlines wherever appropriate.
• Maintaining fee earner diary.
• Preparation of cost estimates for clients.
• Running status reports and portfolio schedules as and when required by clients.
• Adding official fees and firm service charges to our billing system.
• Preparation of invoices.
• Monitoring of fee earner Work In Progress (WIP) eg unbilled time or service charges wherever appropriate.
• Checking new client details on Inprotech database and updating various other records.
• Maintaining client files with relevant client specific information, eg standard procedures re billing, correspondence etc.
• Arranging fee earner travel as required. Preparation of Travel Itineraries and dealing with expense claims on behalf of fee earner, if required.
• Acting as point of contact for client enquiries on behalf of fee earner. Making and receiving telephone calls and dealing with general enquiries.
• Point of contact when arranging internal and external meetings, booking of rooms, venues and refreshments.
• As required, assisting with ad hoc responsibilities and administrative tasks to support fee earners.

Person Specification:

• Ability to work independently to a high standard and use own initiative wherever appropriate.
• Excellent organisational skills.
• Efficient, able to prioritise to meet deadlines and multi-task.
• Must be able and willing to learn new systems and procedures.
• Must be a team player, personable and approachable.
• Able to work under pressure and respond to changing demands on a daily basis

Certifications:

• Preference for CIPA Introductory Certificate in Patent Administration Course (IPAC) and/or CITMA Paralegal Course.
• The Paralegal job title applies to those who have attained one or both of these certifications.