Clyde&Co Hiring for Paralegal – IP, Technology & Commercial Job at Dubai

The Team

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 the required 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