*THIS IS CURRENTLY A REMOTE-WORKING POSITION FROM WITHIN THE UK* *Salary Confidential – Please get in touch for more details* This company is a pioneer in clean energy technology and fuel cell engineering. They aim to bring cleaner and cheaper energy to businesses, homes and vehicles. This role requires an experienced patent/TM paralegal familiar with electronic IP management systems. Purpose of the Job: You will work cohesively with a friendly in-house team of IP attorneys and analysts supporting a wide range of IP capture, prosecution and management activities alongside the talented scientists and engineers.
You will be working within the Legal and IP team reporting to Head Patent Counsel. The role requires an experienced patent/TM paralegal familiar with electronic IP management systems, who will be primarily responsible for docketing all biblio data & deadlines associated with the company’s portfolio, issuing reminders and reports thereon, and refining policies and procedures going forward. Although this company’s cases are prosecuted by external IP suppliers, the individual will oversee and manage the IP suppliers’ output to ensure all legal paperwork is completed in a timely and cost effective fashion. The individual will also directly manage the patent & TM renewals using an external subscription renewals service and similarly instruct all EP validations using an external provider.
Other areas of responsibility include management of all inventor paperwork, prior art records, obtaining translations and searching on online patent databases. The individual may also assist the contracts manager with contract and licence paperwork, IP training materials and general administrative tasks. Skills and Experience: – 5 years experience of patent & TM formalities, either in private practice or industry – familiarity with docketing deadlines on IP management systems – knowledge and experience of IP renewals – good knowledge of WIPO, EPO, EUIPO and UKIPO practice and procedures – knowledge and experience of foreign patent prosecution procedures – experience of patent & TM searching would be an advantage – Preferred qualification in CIPA Patent Administrator Course – Degree level qualification or equivalent Applications from candidates who are also fluent in Korean, Mandarin, Cantonese or German are welcome, as well as from those who have experience of working or living within these countries and cultures.
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