IP Paralegal

Simmons & Simmons LLP Hong Kong

Posted 22 days ago Permanent Competitive

IP Paralegal

Main purpose of the role:

To support the IP team on Hong Kong and China trade mark matters, and assist with international trade mark portfolio management

Main duties and responsibilities:

Prepare and file documents for Hong Kong trade mark applications, registrations and related proceedings
Maintain trade mark portfolios, including docketing, record updates and deadline monitoring
Liaise with clients, overseas associates and trade mark offices
Draft reports on office actions and assist with responses and submissions
Conduct trade mark clearance searches and prepare search reports
Conduct trade mark, company and online research
Support trade mark prosecution, portfolio management and related projects across multiple jurisdictions
Assist with investigations into potential trade mark infringements and preparation of cease-and-desist letters
Prepare fee estimates, portfolio summaries and status reports
Undertake other duties as assigned by fee earners

Person Specifications:

Education / Qualifications / Experience:

Post-secondary education; diploma or degree preferred
3 to 4 years of trade mark experience
Experience handling national trade mark and Madrid Protocol matters
Exposure to regional or international trade mark portfolio management
Knowledge of registered designs and patent formalities is an advantage
Excellent written and spoken English and Cantonese and/or Mandarin

Knowledge and Technical Skills:

Good understanding of trade mark prosecution and portfolio management
Familiarity with Hong Kong and regional trade mark practice and WIPO Madrid System procedures
Strong drafting, research and communication skills
Strong analytical and problem-solving abilities
Proficient in Microsoft Office and legal technology platforms; familiarity with AI tools is an advantage
Strong attention to detail and accuracy

General Skills:

Ability to work independently and meet deadlines
Strong organisational and prioritisation skills
Team-oriented with a collaborative approach
Strong client-service and interpersonal skills
Adaptable, reliable and proactive
Detail-oriented with good judgement and professionalism

Job ID JR102162

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