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Job Title

Trademark Paralegal

Department

IPMT

Office Location

London

Reports To

Group Manager

Working Hours

35 hours per week, 9:30am to 5:30pm but additional hours may be required.  We are happy to consider agile and flexible working patterns.  Our approach to hybrid working allows for up to 40% of time working from home and 60% working in the office. lease contact a member of the recruitment team to discuss further.

Firm Description

Hogan Lovells is one of the leading global law firms.  Our distinctive market position is founded on our exceptional breadth of our practice, on deep industry knowledge, and on our 'one team' global approach.  Formed through the combination of two top international law firms, Hogan Lovells has over 40 offices in the Americas, Asia-Pacific, Europe, the Middle East and Africa.  With a presence in the world's major financial and commercial markets, we are well placed to provide excellent business-oriented advice to our clients locally and internationally.  Our people are the key to our success, which is why we seek to recruit and retain the most talented individuals in all regions of our global practice.

Department Description

From creative ideas to global recognition, brand management is at the heart of what we do. From prosecution to enforcement, strategy to litigation, we've got it covered. 

Global rebrands. Expanding into new markets. Stopping counterfeit products at their source. Defending colour marks or corporate names and identities. These are just some of the things our trade mark professionals do on a daily basis. With a team of IP practitioners, assisted by our colleagues across the world, we offer an integrated approach to brand management.

Key Responsibilities / Accountabilities

This role is to support our London IPMT team in the UK trade mark prosecution practice.   The role and responsibilities include:

• Technical trade mark and design formalities at UKIPO and WIPO, including filing trade mark and design applications, all prosecution,  renewal and post-registration steps which will require filling out and submitting official forms at UKIPO and WIPO;
• Corresponding with fee-earners across our international practice, clients, foreign IP counsels, UKIPO and WIPO;
• Processing all incoming communications from UKIPO, WIPO and foreign counsels, docket deadlines, distributing them to the relevant fee earners;
• Arranging the preparation and execution of supporting documents for filings, recordals and renewals;
• Monitoring deadlines and reminding the fee earners in good time to ensure they have been complied with;
• Seeking instructions in relation to, and dealing with, renewals;
• Providing administrative support including producing status reports for trade marks and designs, managing foreign IP counsels’ invoices, electronic filing of correspondence and assisting with data entry and maintaining our IP database;
• Carrying out company searches and trade mark searches online as well as running searches via Corsearch; and
• Collating trade mark search reports to enable our lawyers to provide advice to clients on availability and registrability of trade marks.

Specific duties or responsibilities may be reviewed from time to time to reflect changes in personnel and management structure, staff location or services.

All members of the firm participate in our Responsible Business program.

Person Specification

Qualifications and Training

• At least 1 year experience in trade mark prosecution, design formalities or trade mark and design renewals is essential;
• A good working knowledge of UK trade mark prosecution practice is preferred;
• Demonstrates experience of managing a significant workload, adhering to tight deadlines;
• Understands and adheres to firm policies (including in relation to billing and accounts payable management);
• Demonstrates experience in implementing and maintaining processes in order to deliver an accurate and good quality service;
• Ability to work efficiently in a fast-paced environment with or without direct supervision;
• A qualification as a CITMA Paralegal would be an advantage, but if the successful candidate has no such qualification, our firm is willing to sponsor the CITMA course subject to good performance for 6 months in the role;
• Strong computer literacy, including proficiency in word processing and spreadsheets; and
• Experience with Corsearch and Anaqua (or other trade mark portfolio management tools) would be a distinct advantage, although training will be given.

General Attributes

The chosen candidate will, above all else, have an intrinsic passion for trade marks and designs.  In addition, the following attributes are essential for the role:

• Meticulous, with good attention to detail;
• Well-organised, personally “owns” workload and is able to manage it pro-actively without prompting as well as, over time, being able to anticipate the practice group’s needs and take action accordingly;
• Strong written and verbal communication skills, including a clear and succinct writing style;
• Is a team player, working well as part of a team including being willing to contribute to informal support and mentoring of others;
• Good inter-personal skills, both orally and in writing, whether dealing with colleagues, service providers or client representatives; and
• Pro-active and able to demonstrate initiative: for example through suggesting process improvements, seeking regular feedback on own performance and taking action to implement it where needed and providing positive and constructive feedback to others in a collegiate and supportive manner.

Agile Working Statement

Our goal is to embed flexibility across our business by giving everyone the opportunity to work in an agile way, whether as a regular pattern or on an ad hoc basis, and we will be happy to discuss this further.

Equal Opportunities Employment Statement

It is the policy of Hogan Lovells to provide equal opportunities for all employees in relation to recruitment, training and promotion.  Decisions in these areas will be made only by reference to the requirements of the job and shall not be influenced by any consideration of age, disability, ethnic origin, gender identity, religion, sex or sexual orientation.

JOB DESCRIPTION

JOB TITLE

Trademark Paralegal

DEPARTMENT

IPMT

OFFICE LOCATION

London

REPORTS TO

Group Manager

WORKING HOURS

35 hours per week, 9:30am to 5:30pm but additional hours may be required.  We are happy to consider agile and flexible working patterns.  Our approach to hybrid working allows for up to 40% of time working from home and 60% working in the office. lease contact a member of the recruitment team to discuss further.

FIRM DESCRIPTION

Hogan Lovells is one of the leading global law firms.  Our distinctive market position is founded on our exceptional breadth of our practice, on deep industry knowledge, and on our 'one team' global approach.  Formed through the combination of two top international law firms, Hogan Lovells has over 40 offices in the Americas, Asia-Pacific, Europe, the Middle East and Africa.  With a presence in the world's major financial and commercial markets, we are well placed to provide excellent business-oriented advice to our clients locally and internationally.  Our people are the key to our success, which is why we seek to recruit and retain the most talented individuals in all regions of our global practice.

DEPARTMENT DESCRIPTION

From creative ideas to global recognition, brand management is at the heart of what we do. From prosecution to enforcement, strategy to litigation, we've got it covered. 

Global rebrands. Expanding into new markets. Stopping counterfeit products at their source. Defending colour marks or corporate names and identities. These are just some of the things our trade mark professionals do on a daily basis. With a team of IP practitioners, assisted by our colleagues across the world, we offer an integrated approach to brand management.

KEY RESPONSIBILITIES / ACCOUNTABILITIES

This role is to support our London IPMT team in the UK trade mark prosecution practice.   The role and responsibilities include:

• Technical trade mark and design formalities at UKIPO and WIPO, including filing trade mark and design applications, all prosecution,  renewal and post-registration steps which will require filling out and submitting official forms at UKIPO and WIPO;
• Corresponding with fee-earners across our international practice, clients, foreign IP counsels, UKIPO and WIPO;
• Processing all incoming communications from UKIPO, WIPO and foreign counsels, docket deadlines, distributing them to the relevant fee earners;
• Arranging the preparation and execution of supporting documents for filings, recordals and renewals;
• Monitoring deadlines and reminding the fee earners in good time to ensure they have been complied with;
• Seeking instructions in relation to, and dealing with, renewals;
• Providing administrative support including producing status reports for trade marks and designs, managing foreign IP counsels’ invoices, electronic filing of correspondence and assisting with data entry and maintaining our IP database;
• Carrying out company searches and trade mark searches online as well as running searches via Corsearch; and
• Collating trade mark search reports to enable our lawyers to provide advice to clients on availability and registrability of trade marks.

Specific duties or responsibilities may be reviewed from time to time to reflect changes in personnel and management structure, staff location or services.

All members of the firm participate in our Responsible Business program.

PERSON SPECIFICATION

QUALIFICATIONS AND TRAINING

• At least 1 year experience in trade mark prosecution, design formalities or trade mark and design renewals is essential;
• A good working knowledge of UK trade mark prosecution practice is preferred;
• Demonstrates experience of managing a significant workload, adhering to tight deadlines;
• Understands and adheres to firm policies (including in relation to billing and accounts payable management);
• Demonstrates experience in implementing and maintaining processes in order to deliver an accurate and good quality service;
• Ability to work efficiently in a fast-paced environment with or without direct supervision;
• A qualification as a CITMA Paralegal would be an advantage, but if the successful candidate has no such qualification, our firm is willing to sponsor the CITMA course subject to good performance for 6 months in the role;
• Strong computer literacy, including proficiency in word processing and spreadsheets; and
• Experience with Corsearch and Anaqua (or other trade mark portfolio management tools) would be a distinct advantage, although training will be given.

GENERAL ATTRIBUTES

The chosen candidate will, above all else, have an intrinsic passion for trade marks and designs.  In addition, the following attributes are essential for the role:

• Meticulous, with good attention to detail;
• Well-organised, personally “owns” workload and is able to manage it pro-actively without prompting as well as, over time, being able to anticipate the practice group’s needs and take action accordingly;
• Strong written and verbal communication skills, including a clear and succinct writing style;
• Is a team player, working well as part of a team including being willing to contribute to informal support and mentoring of others;
• Good inter-personal skills, both orally and in writing, whether dealing with colleagues, service providers or client representatives; and
• Pro-active and able to demonstrate initiative: for example through suggesting process improvements, seeking regular feedback on own performance and taking action to implement it where needed and providing positive and constructive feedback to others in a collegiate and supportive manner.

AGILE WORKING STATEMENT

Our goal is to embed flexibility across our business by giving everyone the opportunity to work in an agile way, whether as a regular pattern or on an ad hoc basis, and we will be happy to discuss this further.

EQUAL OPPORTUNITIES EMPLOYMENT STATEMENT

It is the policy of Hogan Lovells to provide equal opportunities for all employees in relation to recruitment, training and promotion.  Decisions in these areas will be made only by reference to the requirements of the job and shall not be influenced by any consideration of age, disability, ethnic origin, gender identity, religion, sex or sexual orientation.

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