< Back to jobs

Job Title Patent & Trade Mark Administrator
Location London
Description

The Group

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 and Taylor Vinters merged. 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 a commitment to be a net zero carbon business , also play a central strategic role in the direction of the firm. In 2020 we launched Mishcon Purpose , a first-of-its-kind sustainability practice providing Environmental, Social and Governance (ESG) advice and purpose-driven insight to clients.

The Mishcon de Reya Group comprises standalone businesses MDR Brand Management , MDR Cyber , MDR Discover , MDR One , MDR Mayfair (in London, Singapore and Dubai) and MDRx . Complementary to Mishcon de Reya's core areas of work, each is led by best in class professionals recruited from a variety of non-legal industries and sectors.

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.

#LI-Hybrid

More about Mishcon de Reya

Equity, Diversity and Inclusion

london legal walk

Impact and sustainability

mishcon academy

Academy