Trade Mark Paralegal

The position fully supports the trade mark attorney. The paralegal should be able to handle trade mark filing procedures (not substance) at the China Trade Mark Office (CTMO) and the Trade Mark Review and Adjudication Board (TRAB) with minimal supervision.

Personal Characteristics

The paralegal role is extremely important part of a successful trade mark team. Whether or not the paralegal is client facing, the paralegal should take personal responsibility for ensuring that all work done in a timely manner and clients are serviced to the highest level. Attention to detail, good time management and pro-actively anticipating the needs of the trade mark attorney and clients are hallmarks of an excellent paralegal. Being a team player is extremely important and the paralegal should always be happy, willing and able to assist Trade Mark Group colleagues or those of other departments.

Outline of Responsibilities

Keep both paper files and e-files in a timely and orderly manner. Supervise Formality Team (FT) on the following: Matter code set up IPPO record set up Save and track EMS and courier receipts Archive official documents, evidence Update IPPO in a timely and accurate manner. Details of all applications, oppositions, appeals etc. MUST be entered onto IPPO within 2 days of these actions being taken, at the latest. Post fixed fees or supervise FT to post fixed fees in a timely and accurate manner. Fixed fees for applications, searches, renewals, recordals, office actions etc. MUST be entered onto WorkFlow within 2 days of these actions being taken, at the latest. Be responsible for supporting the trade mark attorney on other client matters including preparing opposition materials, drafting format letters, preparing status and filing reports, reporting official notifications, drafting, preparing and translating legal documents. Review watch reports of trade mark applications, select conflicting marks and prepare watch reports in a timely manner. Diarise every piece of work the group is handling, manage deadlines, and send the trade mark attorney timely reminders. Remind trade mark attorney to attend to client emails in a timely manner (when needed): Acknowledge receipt on same day (client care issues need to be raised with partner) Urgent instructions require substantive response on same day Ordinary instructions require substantive response within 3 working days If more time is needed, provide client with realistic estimate on when substantive response can be provided noting any deadlines. Full understanding of latest trade mark filing procedures and relevant laws and regulations. You are expected to periodically get updates on trade mark filing procedures by reviewing the CTMO and TRAB websites. Do NOT assume past practices remain the same today. Independently conduct availability searches both on the CTMO database and FUJIAN and BAITU databases, accurately prepare basic information for the search reports. Knowledge of how to search "key words" and design codes required. Comprehensively conduct internet searches for background information on clients, other parties and use of the trade marks on Baidu, Google etc. search engines under guidance of trade mark attorney. Draft simple search reports, uncomplicated dispute arguments and substantive advice to clients. Meet your time recording target every day. Understand what time is billable, bill no charge or non-billable, and record on Elite in a timely and accurate manner. Competent English language and computer skills (Word, Excel, Powerpoint, etc.)

Additional Responsibilities for Senior Paralegals

Except in very complicated cases, able to report official notifications (refusals, decisions, etc.) and draft detailed arguments without substantial amendment by trade mark attorney. Certain management skills: pro-actively manage work and clients, have clear plans about what tasks to undertake rather than wait for specific instructions from trade mark attorneys. Assist trade mark attorney to review pre-bills. Train and mentor junior paralegals. In-depth knowledge of laws, regulations, practice, etc. about trade mark and other related fields (e.g. design patents, advertising, domain names, trade dress). Able to link the effects of trade mark prosecution to enforcement and commercialisation of the rights. Good knowledge of business and industry of major clients. Good English skills.

---