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Trade Mark Paralegal, Major International Law Firm, Dubai

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Our client are seeking two paralegals to fit within their existing IP practice in Dubai.  You will have an excellent understanding of trade mark formalities process and be adaptable to learn local and international IP law accordingly.  Dubai offers a tax-free earning model and the firm will also provide visas and help source accomodation for you and your family if you are moving from outside of the UAE.  Typical responsibilities will include:

  • Preparing trade mark specifications for lawyer review
  • Preparing trade mark cost estimates and draft advice regarding filing strategy and appropriate classes
  • Receiving and considering adverse examination reports from the UAE Trade Mark Office or foreign agents
  • Preparing draft advice to clients
  • Preparing draft responses to the Trade Mark Office or to agents
  • Preparing reminder or follow up letters to agents or clients
  • Preparing first drafts of notices of opposition and counter statements for the UAE
  • Compiling availability search results and presenting results in letter or table format to lawyers
  • Preparation of documents including preparation of: draft Deeds of Assignment, draft Powers of Attorney and reviewing official trade mark, patent and industrial design forms for filing, acceptance, grant, annuities and recordal of changes of name / address and recordal of assignments as prepared by an IP Administrator
  • Managing the prosecution of trade mark, patent and industrial design application cases, including, prioritising according to timelines given, suggesting solutions, managing communication of proposals to clients and drafting letters to Patent and Trade Mark 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
  • Using the IP Administrator team to ensure that instructions from lawyers to file, renew or otherwise deal with trade marks, 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, 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.
  • Organise routine billing of clients, and liaising with finance and the partners to ensure that invoices are finalised within the appropriate billing cycle and that client-specific invoicing requirements are complied with
  • 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.

Candidates will have previous experience working as an IP Paralegal ideally with a focus on trade mark prosecution.  A knowledge of patent is also useful but not essential.  Formal legal or paralegal qualification is desirable but not essential.  You do not need to have previously worked in the Middle East, experience in any major IP jurisdiction will be considered.  Fluency in English is essential.

Salary: Highly Competitive and Tax Free
Location: Dubai

Tell me more...

For more information or to apply to this role please send an email to: contact@fellowsandassociates.com or telephone +44 20 7903 5019.


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