Mind the gap: the blurry line between paralegals and attorneys

What is the role of a paralegal, how is it changing, and how does it compare to the work carried out by – and options available to – a qualified trade mark attorney? IP recruiter Dawn Ellmore explores.

As you are no doubt aware, CITMA has recently introduced a new level – the CITMA Paralegal – and the Trade Mark Administrators’ Course has been renamed to the CITMA Paralegal Course. Both of these moves are designed to recognise the shift in responsibilities of trade mark administrators over the past few years, to give greater status to those working in trade mark administration, and to help to recognise this as a profession in its own right.

Dawn Ellmore Employment handles vacancies for trade mark administrators, paralegals and attorneys, and as such we have seen how the skills required for administrator and paralegal roles have changed in recent years.

The changing face of the paralegal

There has been a definite shift away from trade mark administration being a “back office” position into one with increasing responsibility, autonomy and client interaction. With this has come a shift in perception of the administrator/paralegal – this is very much seen as a professional role, supported by CITMA, and one that will, in the very near future, include a requirement for continuing professional development (CPD).

Many of the duties carried out by paralegals mirror those that may be more traditionally the territory of a trade mark attorney – including conducting research and trade mark clearance work, investigation work, filing and prosecution, opposition work and trial preparation, and maintenance. Indeed, with the ever increasing using of the internet, infringement activities have amplified and this has increased the workload of, and range of duties undertaken by the paralegal.

The role of a modern trade mark paralegal has increased the need for soft skills such as the ability to work independently and to meet strict deadlines, and a high level of attention to detail.

Comparison to the work of a trade mark attorney

So with the increase in responsibilities of the paralegal, how does their role now differ from that of a trade mark attorney?

In some firms, the time of a paralegal is chargeable in the same way as that of an attorney, but it remains in essence a support role with some limitations. The line is drawn at the point where legal opinions need to be given – only an attorney, who has put themselves through the rigorous training programme and successfully come out the other side, has the legal grounding, skill and experience to give legal opinions in the name of the company, and to go on to represent clients in court proceedings. Client care issues and business development are also still predominantly handled by attorneys. The ultimate heights of partnership in a private practice is also something that would be reserved for qualified attorneys.

The modernisation of the trade mark paralegal profession and the recognition of this by CITMA are both great steps ahead, making the role of a paralegal, and the new class of CITMA membership, something that many trade mark administrators will be very proud to be a part of. There will however always be a distinction between the two professions, and a line that can only be crossed by successfully sitting the qualifying courses to become a Chartered Trade Mark Attorney.

About Dawn Ellmore Employment

Established in 1995, Dawn Ellmore Employment is a market leading intellectual property and legal recruitment agency. Our consultants have an unmatched level of professionalism and over 30 years of providing a professional high-quality IP and legal recruitment service to both clients and candidates. At Dawn Ellmore Employment we recruit exclusively for the intellectual property and legal staff in the UK, Europe and beyond. Please visit www.dawnellmore.co.uk for more information on the services we provide and current opportunities.