(Remote Working) Trade Mark Paralegal / Administrator

Job details

Reference TMPA111120
Job Type Permanent
Location United Kingdom
Salary £25,000 - £30,000
Date Posted 11/11/2020

Job description

*This is a remote-working position from anywhere in the UK. This may change according to recovery from the pandemic but for now it is fully remote-working*

This is a leading UK-based law firm that is well known for their stand-out expertise in the Technology, Media and Entertainment sectors.

The well-established IP group is looking for a Trade Mark Administrator / Paralegal to join the busy team, with responsibility for carrying out trade mark formalities, portfolio management, paralegal duties and client invoicing. This is an initial 9-month contract that may be extended.

The role provides support to the trade mark attorneys and lawyers in the team, and involves maintaining a trade mark records database, monitoring deadlines, and preparing reports for clients. The role provides opportunities for direct correspondence with the relevant intellectual property offices, overseas attorneys, clients, and others in the firm.


Day-to-day duties may include:

  • Managing and updating the trade mark records database with applications and disputes. This will include adding records, producing reports, auditing information and liaising with the company that licenses the database (WebTMS/IPPO).
  • Preparing draft reports (for instance upon filing, publication and registration) for clients, overseas lawyers and intellectual property offices for approval by attorneys and lawyers, and liaising with these individuals and entities under attorney supervision.
  • Handling all invoicing matters including the preparation of invoice narratives, reconciling estimates, time recorded against invoices and money on account, in addition to any other associated administrative tasks.
  • Responsibility for entering and monitoring deadlines, running and distributing diary lists to attorneys and lawyers in the trade mark team and ensuring they have dealt with matters by the deadline.
  • Preparing the forms to file trade mark applications, oppositions and cancellation actions, and applications to record registrable transactions, directly at the UKIPO, EUIPO and WIPO and also instructing overseas attorneys to carry out such work.
  • Responsibility for managing trade mark and domain name renewals, including sending out letters to clients, checking responses, instructing renewals and monitoring deadlines.
  • Preparing Power of Attorney documents, and arranging for notarisation and legalisation where required.
  • Assisting attorneys and lawyers with trade mark audits on trade mark portfolios taken over from other firms and preparing change of representative forms for trade marks.
  • Assistance with the management of the domain name portfolio and renewal deadlines.


Person Specification:

You MUST have experience with trade marks. Anyone without trade mark experience will not be considered. The successful candidate will have good attention to detail skills, monitor deadlines appropriately, and be able to work on their own initiative as well as working as part of a team. Ideally, they will have at least two years of experience as a Trade Mark Paralegal or administrator. They should be hard-working, enthusiastic and organised.

  • Strong computer skills, preferably, with experience of using a trade mark management database. Experience of WebTMS/IPPO is desirable.
  • Excellent organisational and time management skills.
  • Attention to detail.
  • Happy to work under pressure.
  • Adaptable and flexible.
  • Enthusiastic with a “can do” approach.
  • CITMA Paralegal Qualification is desirable.

---- Apply ---

Apply via this advert or email:- arthur@caseltonclark.co.uk - or - call:- +44 (0)20 8076 8393

Caselton Clark are an Intellectual Property agency based in London. We work in partnership with the Perry Clayman Employment Agency on vacancies in the UK and across Europe.

For our latest vacancies please visit www.caseltonclark.co.uk or contact us on +44 (0)20 8076 8393.

Contact Details
This vacancy was posted by Stephen Gill who can be contacted on 020 8076 8393.

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