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Patent Administrator / Secretary

  • Location

    London

  • Sector:

    Intellectual Property - Patents/Trade Marks

  • Job type:

    Permanent

  • Salary:

    £40000 - £45000 per annum

  • Contact:

    Lee Laming

  • Contact email:

    lee@jmlegal.co.uk

  • Job ref:

    LL/PA/TTME_1630512766

  • Published:

    24 days ago

  • Expiry date:

    2021-10-01

  • Startdate:

    ASAP

  • Consultant:

    Lee Laming

The role of a Patent Administrator is a pivotal one to this firm. It is a demanding job with a great deal of responsibility, requiring common sense, diligence and attention to detail at all times. The role requires good people skills as it involves working closely with other staff, including fee earners, other patent administrators and support staff. There is also a great deal of direct contact with clients and associates. At all times, we expect our Patent Administrators to work in a manner that conveys their professionalism and reflects the fact that they are a key part of the firm and the service the firm provides.

Duties include, but are not limited to the following and once training has been given should be able to be carried out with only occasional assistance:

Standard Correspondence & Correspondence Management

Understanding what correspondence is required and either providing the IPT-generated standard letters or fee earner-specific (ad-hoc) letters where appropriate.

  • Draft letters, emails and other correspondence for fee earner to check prior to sending.
  • Look up client information and prepare documentation using IPT as per fee earners instructions.
  • copy typing and amendment of but not exclusively:
    • E-mails
    • Letters
    • Specifications
  • Maintain files electronically using our document management system.

Formalities / Due Date Management / Inprotech

Managing formal matters such as the documents required (see below) on filing or grant (translations, Power of Attorneys, assignments etc), including collating documents to be signed, forwarding them for signature with clear instructions, monitoring deadlines, chasing the signed documents and forwarding them on receipt, and involving the fee earner only when there is a problem.

  • Preparing various Patent Applications and Formalities documents including updating of Inprotech (IPT) where necessary.
  • Reviewing and managing short, medium and long term deadlines with fee earner(s), including identifying where reminders or extensions are required.
  • Actioning incoming electronic post in EPO mailbox.
  • Update IPT with dates to be monitored from any correspondence received.
  • Clear deadlines on IPT once application filed/formal information completed..
  • Enter new and miscellaneous patent and design files onto IPT.
  • Enter filing dates, forms and documents filed on new cases, diarising fees as necessary.
  • Report patent publications to clients, entering relevant details into IPT and diarising appropriate due dates.
  • Abandon pending patent and design records as instructed by fee- earners.
  • Check grant certificates before sending to clients.
  • Update IPT with regard to EPO & EUIPO fee instructions (those paid and those awaiting payment).
  • Ability to do all routine actions eg. Instruct payment of EP fees through EPOline, needing only occasional assistance for unusual actions.
  • General updating of records system as required, including but not limited to recording changes of name, assignment and references.
  • Draft correspondence for reporting foreign Patent and Design publications/communications to clients.
  • Processing of Foreign filing receipts and diarising/entering of subsequent post filing due/completion dates.
  • Validating EP cases Worldwide; obtaining translations of specifications and claims where necessary.
  • Liaising with the Renewals Department as necessary.

Client-specific knowledge

  • Updating and checking various client databases and email systems as per their requirements, including uploading of correspondence, monitoring deadlines, invoices etc.
  • Produce due date reports for specific Clients.

Invoicing

  • Preparation of invoices, (credit and debit notes)
  • Adjusting WIP, including adding items and reducing or removing items, applying client-specific discounts, presenting information according to any client-specific requirements, etc.
  • Assisting the fee earner with managing WIP eg. by noting incoming Foreign Agent invoices.

PA-type Tasks

  • Arrange meetings, travel and itineraries for those fee earners who require such assistance.
  • Manager caseload including due date list, reminders, monitoring D/is
  • Liaise with clients eg. respond to emails and take telephone messages in the absence of fee earners.
  • Provide cover/support other Patent Administrators
  • Route post upon receipt to the appropriate fee earner.
  • Maintaining CRM system with client information.
  • Any other duties a Partner, Fee Earner or senior member of staff may reasonably ask you to carry out.