Description - External
We have a varied and challenging opportunity for an individual join our trade mark formalities team. Our IP group is one of the largest teams in Europe for patent and trade mark work. We have qualified patent and trade mark attorneys working alongside IP, litigation, corporate and commercial lawyers. This presents a unique offering in the market. We have two roles, ideally to be based in Sheffield although we can consider London.
CMS is a Future Facing firm. With 79 offices in 45 countries and 5,000+ lawyers worldwide, we combine deep sector understanding with a global overview, giving us the ability not only to see what's coming, but to shape it.
CMS is well equipped to help our clients face the future with confidence. We are driven by technology and readily embrace the possibilities it opens up for developing new and better ways of delivering legal services. Our bold approach to a changing future ensures that we nurture our employees and recruit top talent.
About the Role
Located in our Sheffield or London office, this role will provide first class support to our Trade Mark team. Key responsibilities and duties will include (but are not limited to):
- Inputting data on our records system - Patricia.
- Updating records to reflect new deadlines/statuses; providing diary reports to wider team.
- Extensive use of UKIPO and WIPO websites/databases including but not limited to downloading incoming correspondence, preparing and filing various trade mark forms such as new applications, renewals, assignments, change of names, etc.
- Dealing with formalities associated with trade mark and design applications.
- Preparing and filing UK and International trade mark and design applications.
- Liaising with our EU trade mark and designs team in Warsaw
- Reporting new trade mark/design filings, publications, and checking and reporting registration certificates to client.
- Corresponding effectively with foreign agents; seeking and preparing cost estimates; preparing powers of attorneys etc.; filing assignments/change of names etc.
- Corresponding effectively with clients, seeking instructions, reporting developments etc.
- Renewals - assisting with trade mark renewals in the UK and overseas.
- Managing own deadline diary
- Opening, new matters including sending conflict checks.
- Ensuring document management system (DMS) is kept up to date with all correspondence.
You will manage renewals for a number of clients.
This includes but is not limited to the following:
- corresponding effectively with foreign agents;
- seeking and preparing cost estimates;
- preparing powers of attorneys etc;
- filing assignments/change of names etc.
The right individual will be have;
- A good understanding of what trade marks are and the process to apply for, obtain and maintain registrations.
- CITMA Paralegal Certified candidates would be an advantage but are not essential. If you have not completed the CITMA Paralegal course, we would support your application (timing to be discussed)
- Knowledge of Patricia database would be an advantage but not essential.
- Experience of trade mark formalities work, to include inputting trade mark data into databases accurately and monitoring deadlines is essential (one year, minimum).
- Self-motivated and proactive attitude are essential.
- Enthusiastic, confident with good organisational and administration skills.
- Flexible and able to effectively manage a number of priorities at any one time.
- High level of accuracy and attention to detail.
- Good Microsoft Office skills.
- Previous experience of a document management system would be beneficial but not essential.
- Good communication skills, both oral and written.
At CMS, a next-generation mindset is woven into all we do. We're diverse, supportive and inclusive, embracing our corporate social responsibility and creating a culture of sustainability in which every one of our people, whatever their background, can maximise their potential and thrive.
For further information about CMS' diversity initiatives and programmes, please click here to view the diversity pages on our website.
Please apply online or contact a member of the Talent Acquisition team if you have any questions. For information regarding our competitive range of benefits please visit our Rewards & Benefits page on our website.
Please note that CMS have a preferred agency panel in place. Only applications submitted via the portal at the point of instruction will be accepted.