IP Paralegal
Closing Date: 15th October 2015
Purpose of Role
Work within a team consisting of a Senior IP Counsel, IP Counsel, IP Paralegals and an IP team secretary. Having responsibility for a significant portfolio to deliver high-quality, commercially orientated Intellectual Property legal services to Diageo marketing and innovation functions, including responsibility for counselling and effective administration of the relevant trade mark portfolios.
Key outputs may vary over time, however, typically include:
•Assist in all aspects of trade mark clearance, prosecution, registration, conflicts and administration to include, for example:
- Conduct preliminary clearance searches; analyse results and prepare draft reports to the business;
- Instruct full clearance searches in the relevant territory/territories and analyse results and prepare draft reports to the business;
- File trade mark applications and prosecute through to registration (e.g. deal with examination reports and supporting documentation) via our external agents;
- Review draft opposition/revocation/cancellation notices for trade mark proceedings, collect and collate evidence to support all opposition proceedings and prepare draft supporting observations;
- Manage all relevant renewals;
•Review and approve advertising and marketing materials and pack designs from an IP angle.
•Assist IP Counsel and Senior IP Counsel with litigation involving Diageo’s IP rights.
•Assist in maintaining proactive counselling relationships within Diageo marketing, tax, strategy and other corporate personnel.
Top Accountabilities
•Conduct preliminary clearance searches; analyse results and prepare draft reports to the business.
•Instruct full clearance searches and analyse results and prepare draft reports to the business.
•Approval of marketing approvals and pack designs
•Obtain from the business team product samples, labels and other information to support trade mark usage, applications, renewals, office actions and conflict matters.
•Assist an external docketing service provider to maintain our Anaqua database.
Qualifications and experience required
•Experience in assisting with large IP portfolios, Internet, design, copyright, patent, trade secret, and passing off/unfair competition issues desirable.
•Ideally at least 5 GCSE/O Levels. A Levels or equivalent qualifications desirable.
•ITMA qualifications highly desirable, especially Foundation level.
•Recently Qualified / Junior Trade mark attorney or senior/experienced IP paralegal desirable.
•Team and project management experience.
•Law firm or in-house experience with large or complicated trade mark portfolios preferred.
•Experience with contested IP proceedings desirable.
•Experience in helping conduct clearance searching and rendering availability opinions, required.
•Prosecution of trade mark applications around the world, highly desirable.
•Experience in assisting with enforcement matters such as co-ordination of investigations, cease & desist letters and other pre-litigation enforcement measures preferred.
•Knowledge of copyright, patent and trade secret protection and other IP areas desirable.
•Developed computer skills, including on-line trade mark clearance searching, trade mark maintenance database software (Anaqua preferred), word processing, and Excel.
•Desire to work in a highly computerised and intense volume of paper environment.
IP Paralegal
Purpose of Role
Work within a team consisting of a Senior IP Counsel, IP Counsel, IP Paralegals and an IP team secretary. Having responsibility for a significant portfolio to deliver high-quality, commercially orientated Intellectual Property legal services to Diageo marketing and innovation functions, including responsibility for counselling and effective administration of the relevant trade mark portfolios.
Key outputs may vary over time, however, typically include:
•Assist in all aspects of trade mark clearance, prosecution, registration, conflicts and administration to include, for example:
- Conduct preliminary clearance searches; analyse results and prepare draft reports to the business;
- Instruct full clearance searches in the relevant territory/territories and analyse results and prepare draft reports to the business;
- File trade mark applications and prosecute through to registration (e.g. deal with examination reports and supporting documentation) via our external agents;
- Review draft opposition/revocation/cancellation notices for trade mark proceedings, collect and collate evidence to support all opposition proceedings and prepare draft supporting observations;
- Manage all relevant renewals;
•Review and approve advertising and marketing materials and pack designs from an IP angle.
•Assist IP Counsel and Senior IP Counsel with litigation involving Diageo’s IP rights.
•Assist in maintaining proactive counselling relationships within Diageo marketing, tax, strategy and other corporate personnel.
Top Accountabilities
•Conduct preliminary clearance searches; analyse results and prepare draft reports to the business.
•Instruct full clearance searches and analyse results and prepare draft reports to the business.
•Approval of marketing approvals and pack designs
•Obtain from the business team product samples, labels and other information to support trade mark usage, applications, renewals, office actions and conflict matters.
•Assist an external docketing service provider to maintain our Anaqua database.
Qualifications and experience required
•Experience in assisting with large IP portfolios, Internet, design, copyright, patent, trade secret, and passing off/unfair competition issues desirable.
•Ideally at least 5 GCSE/O Levels. A Levels or equivalent qualifications desirable.
•ITMA qualifications highly desirable, especially Foundation level.
•Recently Qualified / Junior Trade mark attorney or senior/experienced IP paralegal desirable.
•Team and project management experience.
•Law firm or in-house experience with large or complicated trade mark portfolios preferred.
•Experience with contested IP proceedings desirable.
•Experience in helping conduct clearance searching and rendering availability opinions, required.
•Prosecution of trade mark applications around the world, highly desirable.
•Experience in assisting with enforcement matters such as co-ordination of investigations, cease & desist letters and other pre-litigation enforcement measures preferred.
•Knowledge of copyright, patent and trade secret protection and other IP areas desirable.
•Developed computer skills, including on-line trade mark clearance searching, trade mark maintenance database software (Anaqua preferred), word processing, and Excel.
•Desire to work in a highly computerised and intense volume of paper environment.
IP Paralegal
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