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 and data privacy practice and together, these teams
provide a specialist IP and technology powerhouse in the region. The
IP and technology practice has team members in our offices in Dubai,
Abu Dhabi and Riyadh.
Job Purpose
Provide administrative support to the IP professional
team, particularly to allocated lawyers and to ensure they are fully
supported in all formalities aspects of patent and design filings.
Job requirements
Patents and Designs
Management of all patent deadlines and formality
requirements across the Middle East, including the preparation of
supporting documents and submissions
Entering docketing information on the firm's IP
records management software, including updating reminders,
deadlines and notes concerning patent and design formalities
Overseeing formalities work and tasks carried out by
IP administrators, with assistance from lawyers
Cost estimates on filing national and PCT National
Phase patent applications and industrial designs, including
guidance on supporting documents and formalities requirements
Providing information to clients regarding patent and
industrial design formalities in the region
Assisting with review of supporting documents and
cross checking of data against official patent and design
databases (e.g. PatentScope, EU IPO E-Search) and official
extracts provided by clients
Generation of standard letters to clients, foreign
agents and Patent Offices, and corresponding with clients in
relation to official filing details, upcoming deadlines,
application progress and timeframes, outstanding supporting
documents, extensions of time, publication and grant
Managing the prosecution of patent and industrial
design application cases, including prioritising deadlines,
managing communication of proposals to clients and drafting
letters to Patent Offices for lawyer review
Reviewing draft invoices and other finance related
documents, such as third party agent invoices
Liaising with third party agents in different
countries regarding patent filings and patent formality requirements
Assisting clients with notarisation and legalisation
of Powers of Attorney and Deeds of Assignment before UAE
authorities, liaising with overseas inventors regarding execution
of documents, including arranging overseas notary appointments
Preparing reminders or follow up letters to agents or clients
Working with the IP administration team to ensure
that instructions from lawyers to file, renew or otherwise deal
with patents and designs are carried out accurately and within the
required timeframe
Support the team in general matter administration
including file organisation, dealing with invoicing queries,
assistance with client engagement administration and liaison with
other teams such as finance, translations and corporate services.
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.
Work with the team to compile workflow and know-how
documents concerning patents and designs.
Candidate requirements
The ideal candidate will:
Be educated to at least degree level and / or have
extensive experience (at least 5 years) working within a patent
formalities / patent secretary / patent records clerk role
Currently be working for a top tier patent attorney
firm or law firm with a sizeable patent filing practice
Hold the CIPA patent administrator qualification
Have experience in using IP recordkeeping software
such as Web TMS / Inprotech / Patricia.
Have experience in management of patent annuities
Have experience of direct contact, both written and
verbal, with clients and overseas patent attorneys / agents
Have excellent attention to detail
Be proactive and well-organised with the ability to
manage a heavy workload, multiple deadlines and conflicting priorities
Be able to work under minimum supervision
Have good spoken and written English (Arabic desirable)
Be computer literate with good Microsoft Office skills
About the Firm
Clyde & Co is a leading global law
firm, with 480 partners, 2,400 lawyers and 3,200 legal staff.
With over 5,000 people operating from over
60 offices and associated offices across six continents, Clyde &
Co is committed to creating successful outcomes for our clients. Our
globally integrated teams of disputes, regulatory and transactional
lawyers provide a comprehensive range of legal services and advice
to businesses operating at the heart of global trade and commerce.
Our success in the past 90 years has been
built on our vision of a single global partnership, providing a
platform that offers rapid access to expertise, wherever you operate
in the world.
As our clients have evolved, so have our
core values. 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.
Aligned with these values is Clyde &
Co's commitment to being a responsible business. We take
responsibility for the impact we have on the environment, seeking to
reduce it as much and as quickly as possible. We strive to be a
positive contributor to the communities in which we operate across
our entire global network. We take steps to foster a truly diverse
and inclusive workplace, that allows all of our people to flourish,
for the benefit of our colleagues, the firm and our clients.
Clyde & Co, MEA
With over 30 years' experience in the
region and the largest presence of any international law firm, we
pride ourselves on being able to help clients recognise and overcome
the challenges of doing business in the Middle East and Africa.
In terms of our Middle East foot print,
our more than 40 partners and 150 legal professionals work from four
offices located in the region's major commercial hubs, enabling us
to support our clients across the full spectrum of their corporate
and commercial needs throughout the GCC (Gulf Cooperation Council)
and wider Levant.
In Africa, Clyde & Co is one of the
largest international law firms operating on the continent, with
over 120 lawyers helping clients to enter and operate in Africa.
We have been active in the region for over
20 years, advising on complex multi-jurisdictional transactions that
include some of the continent's largest infrastructure and energy
projects. Our experience extends to more than 50 different African
markets across South, West, East, Central and North Africa.
Our deep sector knowledge covers
insurance, energy, transport, infrastructure, marine and trade as
well as aviation, education, defence, finance, healthcare,
hospitality and technology.