Job description

Requirements

  • Entry level
  • No Education
  • Salary to negotiate
  • London

Description

The Firm


Founded by Victor Mishcon in a one-room office in Brixton in 1937 we now have offices in London and New York, employ more than 800 people, with over 500 lawyers offering a wide range of legal services to companies and individuals. In every area of the law that we operate, Mishcon de Reya LLP prides itself in providing a best in class service to its clients. Specifically we offer the following legal services: corporate; dispute resolution; employment; family; private client; and real estate. An entrepreneurial spirit - where candour and involvement are key - characterises our ability to develop and execute the strategies required to achieve our clients’ goals in all these areas. We are an independent firm with an international footprint that extends far beyond our offices in London and New York.


The Group


The services provided by our Brands team encompass the full life cycle of a brand, from creation through to protection and enforcement. We are experts in trade mark and design filing but we go beyond this. We add value to businesses by playing a strategic advisory role – finding the right legal strategy to best support your commercial strategy.


We operate across four key areas – clearance (including acquisition), monitoring, disputes, and domain names – working in tandem with our IP litigation and commercial contracts teams. We have strong relationships with industry bodies across a variety of sectors and work closely with the UK and EU Intellectual Property Offices and the World Intellectual Property Organisation.


Job Profile


This role is a fantastic opportunity for someone who is looking to grow within a trade marks practice. This will suit either a candidate looking to grow their trade mark experience, or an experienced Paralegal who may have completed their LPC and is now looking to begin their career within trade marks.


The Paralegal will spend their time on the duties noted below in relation to trade marks and designs, supporting the trade mark team, as well as other members of the wider IP team as and when required. In doing this the Paralegal will be required to work independently as well as part of a team. Excellent written and verbal communication is a pre-requisite as are organisational and prioritising skills. The onus is on the Paralegal to spell check work and proof read documents before presenting them to the relevant fee-earner for signature.


Diary management is a key element of the role and in carrying out this duty; the Paralegal will often have to liaise with clients directly. The jobholder will be responsible for managing follow-up arrangements and carrying out appropriate actions where required.


The Paralegal will be the main point of contact for enquiries relating to the portfolios that they support both internally and externally with clients.


This is a rare opportunity for someone to gain experience with direct client contact so excellent interpersonal skills, as well as accurate written and verbal English language skills are essential. The Paralegal will also have a chargeable hours target so the ability to capture and accurately record time on formalities tasks is essential.


Duties and Responsibilities


Pre-Filing


Assisting with pre-filing searches, including instructing outside search agency, follow up and manage search turnaround timeframes.

Assisting with online research into third party marks.

Research PoA requirements within input from local attorneys, collate PoAs and input relevant information.

Prepare estimates for TM filings.

Review whether countries are single/multi class.

Research and collate necessary documents for priority filings.

Verify foreign filing requirements, e.g. filing basis etc.

Filing


Prepare application forms/filing instructions; review Solicitor/TMA's pre-filing correspondence to obtain relevant details; check form/instructions carefully before passing to Solicitor/TMA for final check.

Finalise and file forms/filing instructions.

Proactively prepare and send off filing reports without Solicitor/TMA prompting.

Prosecution


Monitor status of application in electronic diary, including adding country specific expected timeframes for various stages of prosecution, pro-actively prepare and send emails to local attorneys to follow up where appropriate without Solicitor/TMA prompting.

Respond to basic specification objections, including review Solicitor/TMA report to client, check client's instructions and draft appropriate response to IPO.

Prepare and file EOTs.

Publication and Registration


Proactively prepare and send reports of publication without Solicitor/TMA prompting.

Deadline Management


Have a broad understanding of how long tasks take and will follow up with Solicitor/TMA appropriately before, up to, and including meeting of the deadline. Works in conjunction with the TMA to actively manage the diary.

Wait for written confirmation that the deadline has been met each day before removing the de