IP Services Generalist (Paralegal)

    • Brentford, United Kingdom

Site Name: UK - London - Brentford
Posted Date: Apr 7 2020
We are looking for an IP Services Generalist (Paralegal) to join us in Brentford! This role would suit an individual with Experience working within a formalities function either in patent or trade mark practice or as a patent or trade mark paralegal. You will have the initiative to work independently and an eye for detail!

Your responsibilities:

Database/TIPMS and Anaqua:

  • Have knowledge and experience of patent and/or trade mark databases (ideally IPM or Anaqua).
  • Create and maintain party records on IPM and/or Anaqua for applicants, inventors, licensees, licensor etc.
  • Have knowledge of the database country rules and system/custom generated reminders.
  • Provide information from Anaqua and/or IPM to assist a BD activity e.g. in-licensing and out-licensing and assist with/manage the docketing of any new cases coming in and the transfer of any cases out.
  • Check trade mark renewal reminder information from Third Party sources against our internal databases and update if necessary.
  • Cross-check data entry and existing data in IPM and/or Anaqua in accordance with standard procedures and update if necessary.
  • Update records constantly with e.g. application/publication/registration details as new details become available.
  • Review domain name requests, register domain names, create and maintain domain name records on Anaqua

Formalities Practice:
  • Prepare all formal documentation necessary to meet legal requirements (e.g. Powers of Attorney and Assignments), including arranging for notarisation/legalisation as appropriate to manage trade mark and patent rights.
  • Provide information following CLEIT requests and assist any recordal exercise following that CLEIT request.
  • Instruct external counsel to renew trade marks following a strict internal renewal process.
  • Process registration certificates and other legal documents (such as change of ownership certificates, renewal certificates).

General Administration
  • Maintain Patent Office deposit accounts.
  • Resolve filing, database or procedural issues within a broad range, escalating as appropriate.
  • Analyse and resolve Attorney and/or paralegal enquiries.
  • Prepare Internal, General and Corporate Powers of Attorney and monitor expiry dates and renewing Powers as appropriate.
  • Update procedural documentation to ensure continuous process improvement
  • Analyse and resolve enquiries.
  • Monitor and help assist with correspondence in departmental mailboxes
  • Monitor and comply with deadlines for submission of subsequently filed documents.
  • Save correspondence to the appropriate document management system.
  • Archive legal documents following internal process.
  • Assist with various verification projects by contacting external counsel, using registry databases, comparing data and then update the patent and trade mark databases accordingly.
  • Have regular communication with immediate colleagues and with the wider IP Services team, making recommendations for continuous improvement to processes thus ensuring consistency in patent and/or trade mark practices.
  • Generate multiple reports in a timely and effective manner in various formats - status reports, renewal reports, diary/task reports, docketing and cross-check reports.
  • Monitor external counsel updating in Anaqua.
  • Follow internal processes and procedures.
  • Other general formality related activities.

Basic qualifications:

  • Ability to prioritise a complex workload with conflicting deadlines.
  • Experience working within a formalities function either in patent or trade mark practice or as a patent or trade mark paralegal.
  • Project management experience.
  • An understanding of the importance of meeting deadlines.
  • Ability to be able to work independently.
  • Ability to work as part of a team.
  • Confidence to ask to questions/seek further guidance when needed.
  • Ability to multi-task.
  • Positive and enthusiastic outlook.

Preferred qualifications:

  • Qualifications in patent and/or formalities practice preferred e.g. CIPA Administrators Course.
  • A levels or equivalent.

As a company driven by our values of Patient focus, Transparency, Respect and Integrity, we know inclusion and diversity are essential for us to be able to succeed. We want all our colleagues to thrive at GSK bringing their unique experiences, ensuring they feel good and to keep growing their careers. As a candidate for a role, we want you to feel the same way.

As an Equal Opportunity Employer, we are open to all talent. In the US, we also adhere to Affirmative Action principles. This ensures that all qualified applicants will receive equal consideration for employment without regard to race/ethnicity, colour, national origin, religion, gender, pregnancy, marital status, sexual orientation, gender identity/expression, age, disability, genetic information, military service, covered/protected veteran status or any other federal, state or local protected class(US only).

We believe in an agile working culture for all our roles. If flexibility is important to you, we encourage you to explore with our hiring team what the opportunities are.

Please don't hesitate to contact us if you'd like to discuss any adjustments to our process which might help you demonstrate your strengths and capabilities. You can either call us on 0808 234 4391, or send an email ukdiversity.recruitment@gsk.com

As you apply, we will ask you to share some personal information which is entirely voluntary. We want to have an opportunity to consider a diverse pool of qualified candidates and this information will assist us in meeting that objective and in understanding how well we are doing against our inclusion and diversity ambitions. We would really appreciate it if you could take a few moments to complete it. Rest assured, Hiring Managers do not have access to this information and we will treat your information confidentially.

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