Clyde & 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, media & telecommunications (TMT) practice and
together, these teams provide a specialist IP and TMT powerhouse in
the region. Whilst largely operating out of the Dubai office, the
practice has team members in our offices in Abu Dhabi, Riyadh and Bahrain.
The Role
Provide administrative support, to the IP
professional team, particularly to allocated lawyers and to ensure
they are fully supported in patent and administrative functions.
Key Responsibilities
Trademarks
preparing trademark specifications;
preparing trademark cost estimates and
draft advice regarding filing strategy
considering adverse examination reports
from the regional trade mark offices or foreign agents, preparing
draft advice to clients, preparing draft responses to the
Trademark Office or to agents; preparing reminder or follow up
letters to agents or clients;
assisting with the preparation and
drafting of notices of opposition and counter statements for the
region; compiling availability search results and presenting
results in letter or table format to the lawyers.
preparing draft Deeds of Assignment,
preparing draft Powers of Attorney
reviewing official trademark, patent and
industrial design forms for filing, acceptance, grant, annuities
record of changes of name / address and
record of assignments as prepared by IP Administrators managing
the prosecution of trademark cases, including, prioritising
according to timelines given, suggesting solutions, managing
communication of proposals to clients and drafting letters to
Trademark 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.
working with the IP Administrator team
to ensure that instructions from lawyers to file, renew or
otherwise deal with trademarks, patents and designs are carried
out accurately and within therequired 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, management of trademark portfolios, 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.
Patents and designs
Whilst the main focus of the role is
providing support in trademark matters, you may also be required to
provide paralegal support in other areas of IP including patents and
designs. This element of the role would include:
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;
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.
Essential Skills &
Experience The ideal applicant will:
be educated to at least diploma level; a
trademark paralegal qualification desirable;
have at least two years' experience
working in the IP sector;
knowledge of UAE law is desirable
although not essential;
be fluent in written and spoken English,
Arabic desirable;
be team oriented and able to work autonomously;
have strong attention to detail and good
organisation skills; and
be commercially aware and able to take a
practical approach to matters.
Clyde & Co
Clyde & Co is a dynamic,
rapidly expanding global law firm focused on providing a complete
legal service to clients in our core sectors. With over 60 offices
and associated offices in over 120 countries and over 5,000 staff,
we have genuine in-depth knowledge of our core regional and global
sectors. Clyde & Co is one of the longest-standing international
law firms operating in the Middle East and Africa. As a global law
firm, we are able to provide a complete service to clients in our
core sectors of insurance, transport, energy, infrastructure and
trade & commodities.
As our clients have evolved, so have our core values, which are work
as one, excel with clients, celebrate difference and act boldly. 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.
Our Middle East and Africa footprint
Located in commercial hubs across
the Middle East and Africa, our 8 offices allow us to support
international investors and local organisations with a full-service
offering of local specialists across most business sectors and areas
of law.
Our services:Commercial, Commercial Disputes,
Corporate, Cyber Risk, Data Protection & Cybersecurity,
Employment & Immigration, Finance, Global Recoveries, Insolvency
& Reorganisation, Intellectual Property, International
Arbitration, Projects & Construction, Real Estate, Regulatory
& Investigations, Technology
Our sectors:Aviation, Education, Energy &
Natural Resources, Government & Public Bodies, Healthcare,
Hospitality, Infrastructure, Insurance & Reinsurance, Marine,
Retail & Consumer, Technology, Communications, Media &
Entertainment, Trade & Commodities
