Our highly regarded tier 1 IP disputes group operates across the
broadest possible spectrum. Set up over 20 years ago, lawyers in the
group have acted in some of the most significant and influential IP
disputes of recent years. We are one of a select group of firms to
have taken both patent (supplementary protection certificates) and
trade mark cases to the Court of Justice of the European Union, with
successful outcomes for our clients on each occasion. Our experience
is wide and varied, ranging from cross-border patent revocation and
infringement actions through to trade marks, designs and copyright
litigation involving household brands, famous designs and celebrated
artistic works, films and broadcasts.
Our IP disputes group is especially well known for its range of
expertise in the field of enforcement. Our lawyers have secured and
enforced countless search and seizure orders; we advise on and secure
blocking injunctions for our rights holder clients (our team secured
the first ever blocking injunction based upon rights in technical
protection measures in Nintendo v. BT and others); our
anti-counterfeiting and grey market credentials run deep - we
routinely secure customs seizures and civil injunctions to cut off
infringing imports at source; and, as one of the very few IP teams
with in-house criminal prosecutors, we have successfully undertaken
private prosecutions where our clients have been the victims of IP crime.
We have been in the vanguard when it comes to affirmative recovery
and litigation funding. We have market-leading experience in
identifying and investigating infringing supply chains, shutting them
down and securing significant damages payment through settlement or
court orders. Our affirmative recovery solution, Mishcon TulipĀ®, has helped us to recover
millions of pounds for our clients over recent years. We have
considerable experience of procuring and securing litigation funding
for both claimants and defendants through our established
relationships with the funding community, allowing our clients to
pursue or defend claims off balance sheet.
We sit within the larger Innovation Department, part of Mishcon
Future. Our lawyers work across our Cambridge, London, and Oxford offices.
The Team
Our IP team includes our patent, design and brand protection groups,
who are passionate about our clients' inventions. Our strong business
sense and high levels of pragmatism allow us to bring practical and
commercially focused solutions to all our clients' IP protection
needs. At the heart of our practice is a dedication to delivering
to-the-point advice and a global service that is a cut above the rest.
Our patent practice covers patent drafting, filing and prosecution,
design filing and prosecution, contentious patent office proceedings,
freedom to operate advice, infringement and validity advice, and other
patent/design strategy and advisory services, as well as supporting
our disputes team through litigation. We represent clients directly
before the UKIPO, EPO, WIPO, EU IPO and UPC for our patent and designs
work, equally operate on a global basis, working with a network of
trusted overseas counsel to deliver patent and design services around
the world.
The services provided by our Brands group embrace the full life cycle
of a brand, from creation through to protection and enforcement. We
are experts in trade mark and design filing, but we go beyond this to
add value to our clients by playing a strategic advisory role -
finding the right legal strategy to fit their commercial strategy. We
have strong relationships with industry bodies across a variety of
sectors and work closely with the UK and EU Intellectual Property
Offices, and the World Intellectual Property Organisation.
Over 90% of our work is direct client work so the ability to engage
with clients and become their trusted IP advisors is essential to the role.
Duties and Responsibilities
We are looking for a patent and trade mark administrator to join our
IP team. The ideal applicant will be highly motivated and capable of
working as part of a close knit team while taking ownership and
responsibility for their workload, dedicated to delivering excellence
in client service, detail focused and proactive.
The successful candidate will work in our fast-growing IP team,
helping to support our patent attorneys, trade mark attorneys and
lawyers who engage in all aspects of IP strategy.
The role holder will be responsible for:
Managing and updating our patent and trade mark databases
including creating new records, updating records, undertaking audits
and generating reports for clients.
Managing correspondence from the UKIPO, EUIPO, EPO and WIPO.
Managing deadlines and reminders with regards to patent, trade
mark and design matters.
Filing patent, trade mark, design applications at the UKIPO, EPO
and WIPO.
Liaising with overseas counsel with regards to patent, trade mark
and design matters.
Overseeing the instructing of annuities.
Keeping up to date with patent, trade mark and design practice developments.
Assisting with preparing proposals for patent and trade mark work.
Assisting with running conflict checks and opening new matter files.
Preparing, reviewing, and filing standard documents.
You should be willing and able to travel to, and work in, any one of
our offices as required (Cambridge, London and Oxford). We operate a
flexible working policy which enables you to flex between home and
office working.
Skills/Experience
The successful applicant will demonstrate the following skills:
Previous experience working as a patent and/ or trade mark administrator
Highly organised.
Excellent attention to detail.
Ability to prioritise own workload and adhere to strict deadlines.
Ability to assimilate and manage large volumes of data.
Proactive and able to act on their own initiative.
Excellent written and verbal communication skills.
Efficient time management.
Strong interpersonal skills and an ability to communicate
effectively with a broad range of individuals.
Ability to work well within a team.
Highly motivated and reliable.
Dedicated to delivering client service to the highest standards.
Applicants will ideally have, but it's not essential:
Preferably, but certainly not essential, a working knowledge of
the Equinox IP management system
Relevant accreditations recognised by CIPA/IPAC/ CITMA.
Please note that this job
profile is not an exhaustive list of duties but merely an outline
of the key components of the role. You may be required by your
line manager to take on additional responsibilities when requested.
About The Mishcon de Reya Group
The Mishcon de Reya Group is
an independent international professional service business with law at
its heart, employing over 1450 people with close to 670 lawyers. It
includes the law firm Mishcon de Reya LLP and a collection of leading
consultancy businesses that complement the firm's legal services. We
have grown rapidly in recent years, showing more than 40% revenue
growth in the past five years alone.
Based in London, Cambridge, Oxford, and Singapore, with an
association with Karas So LLP in Hong
Kong, the firm services an international community of clients and
provides advice in situations where the constraints of geography often
do not apply. The work we undertake is cross-border,
multi-jurisdictional and complex, spanning six core practice areas: Corporate; Dispute Resolution; Employment; Innovation; Private; and Real Estate.
As of 1 January 2023, Mishcon de
Reya andTaylor Vintersmerged. The merger delivers on
both firms' strategies to support the innovation economy and
accelerate our growing share of the technology, media and
life-sciences legal and consultancy services market in the UK and in
key international innovation hubs globally.
In times of such far-reaching and
profound change we want to be the law firm that enables our clients
- and our own people - to shape the world's possibilities. We are
here to help our clients benefit from new economies, new geographic
centres of wealth, the new global movement of people and capital,
and the impact of new technologies and new knowledge.
Our purpose remains rooted in our
founding values. We take pride in the diverse range of people who
make up the firm and are proactive in driving change and continuous
improvement across the spectrum of equality, diversity and inclusion.Mishcon Academy, our in-house place of learning,
development and new thinking for our people, clients and contacts
and our innovative impact strategy, including acommitment to be a net zero carbon business, also play a central strategic
role in the direction of the firm. In 2020 we launchedMishcon Purpose, a first-of-its-kind
sustainability practice providing Environmental, Social and
Governance (ESG) advice and purpose-driven insight to clients.
We strive to create a fully
diverse and inclusive workplace where all our people are empowered
to fulfil their potential. We are proud of our agile working culture
and are always happy to talk flexible working.