Trade Mark Assistant – Leeds


27 days ago


Yorkshire & North East






1st Mar 2021


DLA Piper


Private practice

DLA Piper is one of the world’s largest law firms, with offices in over 40 countries, and an impressive global IP practice and client list. As part of the continuing development of our business in line with our mission to be the leading global business law firm, we have ambitious plans to continue to grow our UK trade mark prosecution and portfolio management practice.

Crucially we are challenging ourselves to ensure that the manner in which we deliver our trade mark services leads the market, and that we maximise the opportunities offered by our unique global platform so that it delivers unrivalled benefits to our clients. To help drive forward our strategy, we are now seeking to recruit a trade mark assistant in Leeds who will contribute to the shaping of this part of our business and the implementation of change and also, importantly, to assist us with a broad range of ongoing tasks, including matter administration, prosecution, deadline management, renewals and billing.

The responsibilities of the trade mark assistant will include the following as required from time to time:

Practice administration and management

  • Conflict checks, client matter set up, due diligence and engagement letters
  • Handling, reviewing and interpreting correspondence for relevant deadlines and adding/reviewing appropriate deadlines and reminders on our trade mark management system and in electronic diaries
  • Generating weekly docket reports and proactively ensuring that deadlines are met
  • Ensuring that client records on our trade mark management system are up to date and accurate
  • Managing current accounts with trade mark offices and assisting with the invoicing of trade mark files
  • Assisting generally with the management of global trade mark portfolios
  • Working with and managing other trade mark paralegal staff

Client work

  • Preparing first drafts of trade mark specifications
  • Preparing and filing trade mark applications
  • Monitoring the status of trade mark applications and oppositions and pro-actively engaging with our lawyers and attorneys, and with external local attorneys
  • Preparing standard and bespoke reporting communications in a timely and accurate manner, including reporting publications and registrations
  • Preparing draft responses to basic registry objections
  • Pro-actively managing renewals and maintenance requirements
  • Preparing documentation for recordal of changes in company name, company address, and assignments/licenses
  • Managing trade mark watch services, reviewing watches received and drafting reports to clients
  • Liaising with and delivering an excellent service to clients

Internal practice development

  • Effectively implementing and maintaining established processes
  • Working with other members of our team in relation to the continued development of our processes, procedures and materials to ensure we deliver first rate client service combined with efficient internal administration
  • Working with colleagues in other countries to facilitate the smooth operation of the firm’s international trade mark practice
  • Liaison with business process expert colleagues in relation to the use of technology tools to drive efficiency and quality, including the development of applications for Robotic Process Automation

Business development

  • Assisting with business development opportunities, including analysis of trade mark portfolios to identify further growth opportunities
  • Assisting with the on-boarding of new client trade mark portfolios
  • Preparing estimates for trade mark filings

This list of responsibilities is not exhaustive. The role includes practice development, administrative and fee-earning/income generating elements. It may also require the undertaking of additional tasks and administration not listed above as required by the practice from time to time.

The key attributes for this trade mark assistant are:

  • At least 1 year’s previous trade mark experience from a trade mark attorney or law firm
  • Experience with all aspects of trade mark (and ideally also design) formalities work
  • Thorough understanding of trade mark processes of the UKIPO, EUIPO and WIPO
  • An appreciation of the importance of effective deadline management
  • Ability to manage workloads under pressure and to prioritise tasks
  • Ability to work independently without supervision and as part of a collegiate and supportive team in a fast-paced environment
  • Someone who takes a holistic and pro-active approach to trade mark management and has a keen eye for detail
  • Excellent written English and grammar
  • IT literacy including competence in creating visually pleasing and effective documents in Word and Excel, proficiency with the use of internal financial systems, and ability quickly to learn to use portfolio management systems
  • A desire to contribute to practice development and change
  • A desire to deliver excellent client service
  • A flexible approach
  • CITMA Paralegal qualification would be preferred, but not essential

The successful applicant will enjoy an international and fast-paced environment with opportunities for personal development, and will be keen to be part of our firm’s vision to continue to grow this part of our business.

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