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IP paralegal

Private practice legal

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Summary

Gunnercooke intellectual property paralegal – job specification
We are seeking an IP paralegal to join our team on a permanent basis. The role will be based in our offices located on Heddon Street (off Regent Street) in London. The role requires experience in both contentious and non-contentious intellectual property law.
 
Completion of the CITMA paralegal course is desirable. The successful candidate will want to become a trade mark attorney and welcome the opportunity to work across a variety of IP matters. They should have excellent time management skills and be able to work both independently and as part of a growing team.
 
General duties
Client management:
a.      Preparing client engagement letters (using the template provided)
b.      Opening new files
c.      Onboarding clients including checking all client due diligence documentation is obtained
d.      Checking new clients are signed up to mailing lists (and adding them to the mailing list if not)
e.      Closing client files at the end of a matter

Billing:
a.      Tracking fee quotations (also relevant for client management)
b.      Raising bills (including disbursement only invoices)
c.      Sending bills out to clients
d.      Checking bill status
e.      Following up with clients re unpaid invoices
f.       Liaising with GC departments such as Finance, IT and Compliance
General administration:
a.      Diary management – keeping Outlook calendar, Trello and Alt Legal up to date with court, dispute and trade mark deadlines (respectively)
b.      Keeping assigned Sharepoint files up to date
c.      Keeping Trello updated
d.      Ensuring key documents and precedents are filed.

Trade mark
·      Sending out fee quotations
·      Preparing and filing relevant forms and association documents at WIPO or UKIPO
·      Filing trade mark applications
·      Sending instructions to foreign lawyers
·      Updating Alt Legal with mark details and status changes
·      Sending status updates to clients (e.g. priority filing reminders, opposition deadlines)
·      Speaking to UKIPO, WIPO and foreign lawyers in relation to basic queries and status updates
·      Sending weekly watch notices to clients

Litigation
·      Research
·      Compiling documents such as annexes or exhibits
·      Early stage investigations (e.g. whois search, social searches, website reviews, trap purchases)
·      Preparing standard advice emails based on past templates
·      Repeat C&D letters
·      Proof reading documents
·      Filing documents with the Court on CE File
·      Managing case timelines and key deadlines

Non-contentious
·      Preparing first draft basic agreements such as NDAs, simple assignments and intercompany licences

Business development duties
·      Keeping business development leads in Trello up to date
·      Sending follow up emails to potential clients
·      Assisting with slides for webinars and other events
·      Getting draft blogs up and running in Wix (i.e. SEO tags, headline, photo, hashtags etc)
·      Preparing the 3 draft newsletters on a monthly basis
·      Keeping the contact database up to date

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