Patent Paralegal

Clyde & Co

Dubai
Permanent
Full-time

1 month ago

The TeamClyde & Co has the pre-eminent intellectual property (IP) practice in the Middle East with the largest full-service IP team of any international law firm. The IP practice has an unrivalled level of experience across all specialist areas of IP including the development of IP strategies, through to registration, commercialisation, and enforcement of IP rights. Uniquely, the IP practice works very closely with the firm's technology and data privacy practice and together, these teams provide a specialist IP and technology powerhouse in the region. The IP and technology practice has team members in our offices in Dubai, Abu Dhabi and Riyadh.Job PurposeProvide administrative support to the IP professional team, particularly to allocated lawyers and to ensure they are fully supported in all formalities aspects of patent and design filings.Job requirementsPatents and Designs

Management of all patent deadlines and formality requirements across the Middle East, including the preparation of supporting documents and submissions
Entering docketing information on the firm's IP records management software, including updating reminders, deadlines and notes concerning patent and design formalities
Overseeing formalities work and tasks carried out by IP administrators, with assistance from lawyers
Cost estimates on filing national and PCT National Phase patent applications and industrial designs, including guidance on supporting documents and formalities requirements
Providing information to clients regarding patent and industrial design formalities in the region
Assisting with review of supporting documents and cross checking of data against official patent and design databases (e.g. PatentScope, EU IPO E-Search) and official extracts provided by clients
Generation of standard letters to clients, foreign agents and Patent Offices, and corresponding with clients in relation to official filing details, upcoming deadlines, application progress and timeframes, outstanding supporting documents, extensions of time, publication and grant
Managing the prosecution of patent and industrial design application cases, including prioritising deadlines, managing communication of proposals to clients and drafting letters to Patent Offices for lawyer review
Reviewing draft invoices and other finance related documents, such as third party agent invoices
Liaising with third party agents in different countries regarding patent filings and patent formality requirements
Assisting clients with notarisation and legalisation of Powers of Attorney and Deeds of Assignment before UAE authorities, liaising with overseas inventors regarding execution of documents, including arranging overseas notary appointments
Preparing reminders or follow up letters to agents or clients
Working with the IP administration team to ensure that instructions from lawyers to file, renew or otherwise deal with patents and designs are carried out accurately and within the required timeframe
Support the team in general matter administration including file organisation, dealing with invoicing queries, assistance with client engagement administration and liaison with other teams such as finance, translations and corporate services.

Projects

Undertake or participate in projects as designated by Head of Department to benefit the group, such as reviews of systems or documenting how the group functions.
Work with the team to compile workflow and know-how documents concerning patents and designs.

Candidate requirementsThe ideal candidate will:

Be educated to at least degree level and / or have extensive experience (at least 5 years) working within a patent formalities / patent secretary / patent records clerk role
Currently be working for a top tier patent attorney firm or law firm with a sizeable patent filing practice
Hold the CIPA patent administrator qualification
Have experience in using IP recordkeeping software such as Web TMS / Inprotech / Patricia.
Have experience in management of patent annuities
Have experience of direct contact, both written and verbal, with clients and overseas patent attorneys / agents
Have excellent attention to detail
Be proactive and well-organised with the ability to manage a heavy workload, multiple deadlines and conflicting priorities
Be able to work under minimum supervision
Have good spoken and written English (Arabic desirable)
Be computer literate with good Microsoft Office skills

About the FirmClyde & Co is a leading global law firm, with 480 partners, 2,400 lawyers and 3,200 legal staff.With over 5,000 people operating from over 60 offices and associated offices across six continents, Clyde & Co is committed to creating successful outcomes for our clients. Our globally integrated teams of disputes, regulatory and transactional lawyers provide a comprehensive range of legal services and advice to businesses operating at the heart of global trade and commerce.Our success in the past 90 years has been built on our vision of a single global partnership, providing a platform that offers rapid access to expertise, wherever you operate in the world.As our clients have evolved, so have our core values. We believe that these values reflect our firm, our strategy and our commitment to delivering commercially-minded legal advice, client-focused services, and innovative technological solutions to support our clients.Aligned with these values is Clyde & Co's commitment to being a responsible business. We take responsibility for the impact we have on the environment, seeking to reduce it as much and as quickly as possible. We strive to be a positive contributor to the communities in which we operate across our entire global network. We take steps to foster a truly diverse and inclusive workplace, that allows all of our people to flourish, for the benefit of our colleagues, the firm and our clients.Clyde & Co, MEAWith over 30 years' experience in the region and the largest presence of any international law firm, we pride ourselves on being able to help clients recognise and overcome the challenges of doing business in the Middle East and Africa.In terms of our Middle East foot print, our more than 40 partners and 150 legal professionals work from four offices located in the region's major commercial hubs, enabling us to support our clients across the full spectrum of their corporate and commercial needs throughout the GCC (Gulf Cooperation Council) and wider Levant.In Africa, Clyde & Co is one of the largest international law firms operating on the continent, with over 120 lawyers helping clients to enter and operate in Africa.We have been active in the region for over 20 years, advising on complex multi-jurisdictional transactions that include some of the continent's largest infrastructure and energy projects. Our experience extends to more than 50 different African markets across South, West, East, Central and North Africa.Our deep sector knowledge covers insurance, energy, transport, infrastructure, marine and trade as well as aviation, education, defence, finance, healthcare, hospitality and technology.

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