Patent Paralegal

at  ClydeCo

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Job Title
Patent Paralegal
Job Location
Dubai
Job Type

Paralegals
Country/Territory

JOB REQUIREMENTS

Patents and Designs

• Management of all patent deadlines and formality requirements across the Middle East, including the preparation of supporting documents and submissions
• Entering docketing information on the firm’s IP records management software, including updating reminders, deadlines and notes concerning patent and design formalities
• Overseeing formalities work and tasks carried out by IP administrators, with assistance from lawyers
• Cost estimates on filing national and PCT National Phase patent applications and industrial designs, including guidance on supporting documents and formalities requirements
• Providing information to clients regarding patent and industrial design formalities in the region
• Assisting with review of supporting documents and cross checking of data against official patent and design databases (e.g. PatentScope, EU IPO E-Search) and official extracts provided by clients
• Generation of standard letters to clients, foreign agents and Patent Offices, and corresponding with clients in relation to official filing details, upcoming deadlines, application progress and timeframes, outstanding supporting documents, extensions of time, publication and grant
• Managing the prosecution of patent and industrial design application cases, including prioritising deadlines, managing communication of proposals to clients and drafting letters to Patent Offices for lawyer review
• Reviewing draft invoices and other finance related documents, such as third party agent invoices
• Liaising with third party agents in different countries regarding patent filings and patent formality requirements
• Assisting clients with notarisation and legalisation of Powers of Attorney and Deeds of Assignment before UAE authorities, liaising with overseas inventors regarding execution of documents, including arranging overseas notary appointments
• Preparing reminders or follow up letters to agents or clients
• Working with the IP administration team to ensure that instructions from lawyers to file, renew or otherwise deal with patents and designs are carried out accurately and within the required timeframe
• Support the team in general matter administration including file organisation, dealing with invoicing queries, assistance with client engagement administration and liaison with other teams such as finance, translations and corporate services.

CANDIDATE REQUIREMENTS

The ideal candidate will:

• Be educated to at least degree level and / or have extensive experience (at least 5 years) working within a patent formalities / patent secretary / patent records clerk role
• Currently be working for a top tier patent attorney firm or law firm with a sizeable patent filing practice
• Hold the CIPA patent administrator qualification
• Have experience in using IP recordkeeping software such as Web TMS / Inprotech / Patricia.
• Have experience in management of patent annuities
• Have experience of direct contact, both written and verbal, with clients and overseas patent attorneys / agents
• Have excellent attention to detail
• Be proactive and well-organised with the ability to manage a heavy workload, multiple deadlines and conflicting priorities
• Be able to work under minimum supervision
• Have good spoken and written English (Arabic desirable)
• Be computer literate with good Microsoft Office skills

ABOUT THE FIRM

Clyde & Co is a leading global law firm, with 480 partners, 2,400 lawyers and 3,200 legal staff.
With over 5,000 people operating from over 60 offices and associated offices across six continents, Clyde & Co is committed to creating successful outcomes for our clients. Our globally integrated teams of disputes, regulatory and transactional lawyers provide a comprehensive range of legal services and advice to businesses operating at the heart of global trade and commerce.
Our success in the past 90 years has been built on our vision of a single global partnership, providing a platform that offers rapid access to expertise, wherever you operate in the world.
As our clients have evolved, so have our core values. We believe that these values reflect our firm, our strategy and our commitment to delivering commercially-minded legal advice, client-focused services, and innovative technological solutions to support our clients.
Aligned with these values is Clyde & Co’s commitment to being a responsible business. We take responsibility for the impact we have on the environment, seeking to reduce it as much and as quickly as possible. We strive to be a positive contributor to the communities in which we operate across our entire global network. We take steps to foster a truly diverse and inclusive workplace, that allows all of our people to flourish, for the benefit of our colleagues, the firm and our clients.

Provide administrative support to the IP professional team, particularly to allocated lawyers and to ensure they are fully supported in all formalities aspects of patent and design filings.