IP Paralegal

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
• Broad knowledge of trade mark and design filing and prosecution requirements.
• Understanding the principals 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, ie 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 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.