IP Paralegal for a Multinational Law Firm

RecruitMe FZE

Dubai, UAE

Ref: QP103-386

Job description / Role

Employment: Full Time

Provide paralegal support, to the IP professional team, particularly to allocated lawyers and to ensure allocated lawyers are fully supported in paralegal and administrative functions.

General responsibilities

Paralegal Support
- Preparation of routine correspondence and review of documentation (other than database generated precedent letters) regarding all forms of IP rights, in particular trademarks, patents and industrial designs, including:

Patents and Designs
- Cost estimates on filing national and PCT National Phase patent applications and industrial designs, including guidance on supporting documents and formalities requirements;
- Factual information to clients regarding patent and industrial design searching options in the region;
- Assisting with review of priority documents and cross checking of data against official patent and design databases (e.g. PatentScope, E-Search) and official extracts provided by client;
- Corresponding with clients in relation to official filing details, upcoming deadlines, application progress and timeframes, outstanding supporting documents and deadlines;
- Assisting clients with notarisation and legalisation of Powers of Attorney and Deeds of Assignment before Dubai notary public and liaising with Corporate Services regarding the same;
- Managing the review and filing of supporting documents for patent and design applications;
- Receiving and considering formality and substantive examination reports from the various Patent Offices or foreign agents, preparing draft advice to clients, preparing draft responses to the various Patent Offices or to agents;
- Preparing reminders or follow up letters to agents or clients;
- Conducting manual searches on Patent Office online registers (Saudi Arabia and GCC Patent Office) and preparing draft report to client on results, with lawyer review;
- Taking instructions from annuity service providers and clients regarding payment of annuities for patents and industrial designs, managing payment of annuities to meet relevant deadlines, arranging reports to clients and following up where necessary.

Trade Marks
- Preparing trade mark specifications for lawyer review;
- Preparing trade mark cost estimates and draft advice regarding filing strategy and appropriate classes;
- Receiving and considering adverse examination reports from the UAE Trade Mark Office or foreign agents, preparing draft advice to clients, preparing draft responses to the Trade Mark Office or to agents;
- Preparing reminder or follow up letters to agents or clients;
- Preparing first drafts of notices of opposition and counter statements for the UAE;
- Compiling availability search results and presenting results in letter or table format to lawyers.

Preparation of documents including preparation of:
- Draft Deeds of Assignment
- Draft Powers of Attorney
- Reviewing official trade mark, patent and industrial design forms for filing, acceptance, grant, annuities and recordal of changes of name / address and record of assignments as prepared by IP Administrator
- Managing the prosecution of trade mark, patent and industrial design application cases, including, prioritising according to timelines given, suggesting solutions, managing communication of proposals to clients and drafting letters to Patent and Trade Mark Offices for lawyer review.
- Compiling documents and evidence to attach to declarations or affidavits ensuring that exhibits accurately reflect the corresponding statements in the affidavit or declaration and that the document is finalised ready for execution.
- Using the IP Administrator team to ensure that instructions from lawyers to file, renew or otherwise deal with trade marks, patents and designs are carried out accurately and within the required timeframe. This also includes managing the file opening process for new matters to ensure that our procedures are followed.
- Support the allocated lawyers and Senior Paralegals in general matter administration including file organisation, dealing with invoicing queries, monitoring of deadlines, drafting of letters, assistance with client administration and liaison with other teams such as finance, translation or corporate services.

Billing
- Organise routine billing of clients, and liaising with finance and the partners to ensure that invoices are finalised within the appropriate billing cycle and that client-specific invoicing requirements are complied with.
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.

Requirements

The ideal candidate will
- Be educated to degree level; formal legal or paralegal qualification desirable
- Have at least 2 years' experience working in a professional services environment; law firm or equivalent in- house IP experience preferred
- Contract review and drafting experience is preferred
- Knowledge of UAE law is desirable
- Be fluent in written/spoken English
- Be team oriented and able to work autonomously
- Have strong attention to detail and good organisational skills
- Be commercially aware and able to take a practical approach to matters

About the Company

RecruitME are a specialized recruitment consultancy supplying top tier business support staff to Dubais leading multinational organizations. We carefully source, screen and select only the very best candidates to assist our clients in making easier recruitment decisions faster.

Differentiating ourselves from standard recruitment agencies our consultants have been carefully chosen for their backgrounds in business support for leading multinational organizations. Having been both the client and the candidate previously, we have an insiders understanding of the recruitment process and our clients needs.

What we do:

Specializing in business support positions we can assist in introducing a small selection of experienced administration, finance and human resource candidates with the relevant experience to benefit your business. Our careful screening process ensures that we have met with and can give a concise overview of each candidates skills and current situation before you meet them.

We pride ourselves on sending our clients only the very best available candidates in the market to ensure a simplified, hassle free and timely recruitment experience for all involved.

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Paralegal salaries in UAE

Average monthly compensation
AED 14,500

Breakdown available for industries, cities and years of experience