IP Paralegal


7 days ago


London & South East






13th Aug 2019





IP Paralegal

Working within a wider group of 15 in the London Office, the paralegal team currently consists of 2 people providing predominantly trade mark searching, filing, prosecution, maintenance and renewal for the London based brands and several Geneva based brands of Richemont. This role is to provide a full IP protection service (except patents) for the Yoox Net-A-Porter Group and where possible, to pro-actively advise on enhanced methods of protection. 

Key Responsibilities

  • Trade Mark searching.
  • Trade mark filings and prosecution – primary contact liaising with foreign counsel.
  • Trade mark renewals; liaising with business to obtain evidence of use for certain jurisdictions for renewals.
  • Trade mark oppositions, cancellations, change of Address, Assignment etc; liaising with business to obtain evidence to support actions.
  • 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 the IP protection.
  • Preparation of and providing trade mark and design reports.
  • Ensuring integrity of the records database (DIAMS) including keeping the database updated for trade marks, designs, oppositions, agreements, assignments, creating portfolios for acquisitions.
  • 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.

You may be required to undertake such further duties as your skills, qualifications and experience allow and /or as may be assigned to you by the Company from time to time.

Required Experience

  • Proven experience of IP filing and prosecution experience in both trade marks and designs; must have international experience, including filing via WIPO, not just UK/EU.

Technical skills / abilities / including languages (if applicable)

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

Personal Skills

  • High level of attention to detail, task focused and able to meet deadlines.
  • Ability to think and act quickly and be 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 the ability to communicate appropriately at all levels.
  • Strong customer and service focus, solution oriented and takes pride in their work.

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