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Senior Paralegal IP

Senior Paralegal IP

  • Location United Kingdom - South East - London
  • Travel required Negligible travel
  • Job category Legal Group
  • Relocation available No
  • Job type Professionals
  • Job code 139698BR
  • Experience level Intermediate
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Job summary

To manage domestic, foreign and international trademark paralegal activities (i.e., trademark filing, prosecution, and maintenance) in support of bp’s intellectual property needs in relation to the acquisition and maintenance of bp’s trademarks rights. To manage a global complex trademark docket, assisting a team of attorneys in resolving routine legal issues with minimal or no supervision. Robust vendor management, cost control and strategic management of vendors in the areas of acquisition, enforcement and maintenance of bp’s trademark rights.

About the job:

  • Handle domestic, international and foreign trademark paralegal activities (i.e., trademark filing, prosecution, and maintenance) in support of BP’s intellectual property needs
  • Interact with UK Intellectual Property Office, World Intellectual Property Office and other foreign patent offices with respect to paralegal matters, interact with outside counsel and instruct foreign law firms as appropriate, and manage all documents / correspondence in accordance with departmental practice; resolving the legal issues with minimal or no supervision
  • Prepare and submit legal documents compliant with legal requirements for each jurisdiction and for bp’s IP practice such as powers of attorney and specific authorizations to third parties; intercompany assignments and worldwide assignments; and arrange for the legalization and notarization of them in line with country-specific legal guidelines
  • Manage trademark attorney dockets and maintain the IP databases. From government notifications (national and international) and legal correspondence, collect accurately the deadlines and requirements for legal submissions; keep docket current; prepare initial drafts of response to office actions for review by the attorney and support the attorneys in the filing of submissions to meet deadlines.
  • Be responsible for supporting the trademark 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 trademark applications and select conflicting marks for review by the attorney
  • Draft inter-company agreements, permission letters and similar for review by the attorney
  • Comprehensively conduct internet searches for background information on clients, other parties and use of the trademarks on search engines under guidance of trademark attorney.
  • To provide legal expertise and technical recommendations in support of large transactions/ divestments and in the acquisition of trademarks. Handling complex pre filing issues that arise and verification of attorneys’ instructions.
  • Actively contributes to agenda for drive for simplification and harmonization of processes and procedures globally.

About you:

Qualified paralegal (CITMA q· Previous trademark paralegal experience

  • Ability to network and build key relationships to enhance effectiveness and to operate from a position of influence given the seniority of the individuals they interact with
  • Previous experience of working in law firm, or in-house legal team with trademark attorneys
  • Demonstrates evidence of robust management of vendors
  • Ability to prioritize workload in a fast-paced and deadline-driven environment.
  • Planning and organizational skills.
  • Ability to work independently and with strong attention to detail
  • Strong interpersonal skills and good communicator with proven ability to lead meetings with clients. Work well as part of a team, demonstrating flexibility to support others in the team at times of high-volume workload to achieve the best results. Foster a one team environment
  • Knowledge of Excel and ability to provide effective reporting
  • Previous experience of working with document management system
  • Previous experience of working with trademark portfolio management tool – WebTMs or similarualified or equivalent experience)
  • Knowledge of patents / working as a patent paralegal
  • CIPA paralegal / CILEx-qualified paralegal
  • Patent portfolio management tool – CPI or similar

To manage domestic, foreign and international trademark paralegal activities (i.e., trademark filing, prosecution, and maintenance) in support of bp’s intellectual property needs in relation to the acquisition and maintenance of bp’s trademarks rights. To manage a global complex trademark docket, assisting a team of attorneys in resolving routine legal issues with minimal or no supervision. Robust vendor management, cost control and strategic management of vendors in the areas of acquisition, enforcement and maintenance of bp’s trademark rights.

Apply Search all jobs at bp