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About the Role

This is an exciting new role within our highly experienced, multi-disciplinary Paralegal Team, with a particular focus on Patent Searching and Watching. It offers an excellent opportunity for someone looking to apply and further develop specialist expertise alongside a wider IP practice. While not a pathway to a Trainee Patent Attorney position, it allows Paralegals to focus on interesting, analytical, and varied work, managing their workload independently and becoming integral to delivering exceptional client service.

Responsibilities

• Support fee earners and contribute to the delivery of top-tier IP services to clients.
• Engage in extensive direct client contact.
• Assist in supervising, training, and mentoring junior paralegals and IP support staff.
• Manage non-technical stages of prosecuting patent, trade mark, and design applications.
• Maintain and ensure the accuracy of records on the IP Management system (Inprotech), cross-referencing with PTO registers and third-party databases.
• Handle and coordinate the filing of multiple international applications, including PCT National Phase and international TM filing programs.
• Support and contribute to project work, including business change and systems projects.
• Prepare cost estimates and forecasts.
• Manage the takeover of client portfolios.
• Support and manage renewals, including processing ad hoc instructions and delivering renewal services.
• Prepare and check client portfolio reports for forwarding to clients.
• Handle inquiries from clients and foreign agents.
• Conduct IP searching and watching, including analysis of results.
• File and record assignments and other name/address changes.
• Obtain and manage owner/applicant signatures, notarisation, and legalisation of documents.
• Assist with due diligence and legal research.
• Request invoices and provide assistance with billing.
• Liaise with internal support teams.
• Undertake ad hoc duties to add value and support the firm.
• Potentially take the lead or coordinate specific areas such as client liaison, IP type, or service.
• Manage and complete US Information Disclosure Statements.
• Manage Indian ongoing Section 8 requirements and other foreign formalities.
• Verify case management reminders, data, and charging items.
• Obtain and organize citations.
• Handle National Phasing of PCT Applications.
• Perform patent and NPL searches, liaise with specialist search providers, and order copies of Journal Articles and other NPL.
• Update patent watch results.
• Prepare Trade Mark applications, including drafting specifications and resizing image files.
• Prepare, process, and check Trade Mark forms from UKIPO, EUIPO, and WIPO Registries.
• Review examination reports and draft advice to clients.
• Review watch notices/surveillance reports and report potential conflicting applications to clients.
• Report prosecution progress to clients, including filing receipts, search reports, acceptance, publication, and registration certificates.
• Work closely with Trade Mark Legal Assistants to process administrative tasks.
• Review Inprotech reminders and send out reminders where appropriate.
• Monitor deadlines and remind Fee Earners or take appropriate action.
• Compile and collate evidence for use in oppositions/appeals/statements of use.
• Respond to client queries and provide advice on Trade Mark processes.
• Prepare design applications, including preparation/review of drawings.
• File design applications online at UKIPO, EUIPO, and WIPO.
• Prepare instructions for foreign design filings.
• Report communications from national offices and foreign attorneys.
• Support the litigation function.

Requirements

• A minimum of 12 months of hands-on experience in Patent Searching and Watching is essential.
• Demonstrable track record in a Paralegal or other highly autonomous IP Support Role.
• Ability to prioritize own workload, work to tight deadlines, and work flexible hours.
• Competence in MS Word and MS Excel.
• Willingness to broaden knowledge and collaborate across disciplines.
• Willingness to adapt to change and be proactive in offering suggestions/solutions.
• Maintain a professional image at all times.
• Develop positive working relationships with colleagues.
• Be prepared to help out wherever and whenever necessary.

Skills

• Patent Searching
• Patent Watching
• IP Management system (Inprotech)
• MS Word
• MS Excel
• Assignment work
• Trade Mark applications
• Trade Mark processes
• Design applications
• Due diligence
• Legal research

Location

• United Kingdom

Work Type

• Full-time

Experience Level

• Minimum 12 months experience in Patent Searching and Watching
• Experienced professional

Education Level

• Degree standard (desirable)
• CIPA/CITMA/EPAC qualification (desirable)

About the Company

• J A Kemp LLP is a firm with experienced IP Paralegals specializing in Designs, Patents, Legal and Assignments, and Trade Marks.
• The team structure provides flexibility and opportunities for varied work and cross-training.

Equal Opportunity

• J A Kemp LLP is an equal opportunities employer, treating people fairly.
• Applications are welcomed from all suitably skilled persons regardless of their gender, age, race, disability, ethnic background, religion/belief, sexual orientation, gender reassignment or marital/family status.