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IP Paralegal

Simmons & Simmons LLP Hong Kong
Posted 2 months ago Permanent Competitive

IP Paralegal

Simmons & Simmons LLP Hong Kong
IP Paralegal
Main purpose of the role:

To support the IP team on Hong Kong and China trade mark matters, and assist with international trade mark portfolio management

Main duties and responsibilities:
  • Prepare and file documents for Hong Kong trade mark applications, registrations and related proceedings
  • Maintain trade mark portfolios, including docketing, record updates and deadline monitoring
  • Liaise with clients, overseas associates and trade mark offices
  • Draft reports on office actions and assist with responses and submissions
  • Conduct trade mark clearance searches and prepare search reports
  • Conduct trade mark, company and online research
  • Support trade mark prosecution, portfolio management and related projects across multiple jurisdictions
  • Assist with investigations into potential trade mark infringements and preparation of cease-and-desist letters
  • Prepare fee estimates, portfolio summaries and status reports
  • Undertake other duties as assigned by fee earners

Person Specifications:

Education / Qualifications / Experience:
  • Post-secondary education; diploma or degree preferred
  • 3 to 4 years of trade mark experience
  • Experience handling national trade mark and Madrid Protocol matters
  • Exposure to regional or international trade mark portfolio management
  • Knowledge of registered designs and patent formalities is an advantage
  • Excellent written and spoken English and Cantonese and/or Mandarin

Knowledge and Technical Skills:
  • Good understanding of trade mark prosecution and portfolio management
  • Familiarity with Hong Kong and regional trade mark practice and WIPO Madrid System procedures
  • Strong drafting, research and communication skills
  • Strong analytical and problem-solving abilities
  • Proficient in Microsoft Office and legal technology platforms; familiarity with AI tools is an advantage
  • Strong attention to detail and accuracy

General Skills:
  • Ability to work independently and meet deadlines
  • Strong organisational and prioritisation skills
  • Team-oriented with a collaborative approach
  • Strong client-service and interpersonal skills
  • Adaptable, reliable and proactive
  • Detail-oriented with good judgement and professionalism
Job ID  JR102162
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