Software Business - IP Paralegal

  • Location

    City of London, London

  • Sector:

    Corporate & Commercial

  • Job type:

    Permanent

  • Salary:

    Negotiable

  • Contact:

    Priya Shah

  • Contact email:

    trdaxtraadresp@thesrgroup.com

  • Job ref:

    PR/193618_1610011728

  • Published:

    9 months ago

  • Expiry date:

    2021-01-24

  • Startdate:

    2.12.2021

  • Client:

    #

  • Consultant:

    #

As a Senior Paralegal IP you will help accelerate our vision of becoming a great SaaS company, by supporting colleagues to protect the intellectual assets that give the company its competitive edge. Through our innovation processes, colleagues create meaningful innovation for customers and colleagues alike. As a Senior Paralegal specialised in Intellectual Property you will support the Legal IP team to revolutionise existing IP management practices, and provide high-quality specialist support to the IP Legal team. You will serve as a role model and mentor to our junior paralegals through sharing your specialist knowledge and experience.

You will deliver toward the business's IP strategy, by providing valuable support to the Senior IP Counsel and IP Director:

  • Evolve and co-ordinate our internal processes for the management of registered rights. Proactively identify and pursue opportunities to improve the company's approach to IP management, and enhance the user-experience.
  • Drive formality processes for registration of IP rights (patents, trademarks, copyright and design rights), including taking accountability for the execution and management of documents including, powers of attorney, trademark specimens of use and letters of consent.
  • Maintain accurate records of registered IP, audit records and monitor deadlines. Communicate with attorneys and internal stakeholders regarding upcoming deadlines.
  • Improve our internal trademark renewal process, by fostering and leveraging relationships with business stakeholders and manage instruction of outside counsel.
  • Gather and present data from the business to support submissions, such as specimens of use and copyright filings.
  • Perform preliminary clearance and availability trademark searches.
  • Conduct research into trademark usage, e.g. to support trademark oppositions, litigation and clearance.
  • Assist in drafting and reviewing IP documents, such as assignments, licenses, co-existence agreements and correspondence with third party rights owners.
  • Monitor and triage IP queries submitted to the IP team. Supporting colleagues to provide information required for the IP team to advise.
  • Apply knowledge of internal policies, procedures, processes, and guidelines and support colleagues by directing them to the appropriate information.
  • Assist in the preparation of reports of registered rights and IP owners to support activities of the broader legal team, e.g. M&A and commercial legal due diligence.
  • Mentor, coach, support and develop junior paralegals.
  • Grow relationships, influence and collaborate with other functions to ensure effective and fully aligned end-to-end legal support to the wider business colleagues on cross-functional projects.
  • Actively assist in the development and management of relationships with key stakeholders across the business with an aim to build and maintain the legal function's reputation as an approachable and collaborative professional team delivering high quality advice and support.
  • Support the team to enable a global culture of IP protection.

Skills, know-how and experience:

Must haves:

  • Experience of managing registered IP portfolios.
  • Knowledge of IP legal principles and processes.
  • Drafting and reviewing skills (e.g. licenses, assignments, coexisting agreements etc).
  • A collaborative team player with great communication skills, and an empathetic user-centred approach.
  • A data-driven approach to process improvement.
  • Ability to work independently and produce consistent high-quality deliverables.
  • A dynamic , curious and adaptable individual, with thirst for experimentation and continuous improvement.
  • Demonstrates an empathetic user-centred approach.

Preferred:

  • Confidence in drafting letters of consent, cease and desist letters, undertakings etc.
  • Experienced in trademark clearance.
  • Familiarity with the patent lifecycle.
  • Experience with source code copyright filing processes.
  • Familiarity with and/or willingness to learn open source licensing.
  • A supportive and engaging teacher and mentor for junior colleagues.

Please note our advertisements use PQE/salary levels purely as a guide. However we are happy to consider applications from all candidates who are able to demonstrate the skills necessary to fulfil the role.

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