Job Description

Description

The Department

The pace of change in the business world has never been greater. Even before the COVID-19 pandemic, new thinking, technology and business models have shaken up the old and made possible ideas that would have been unthinkable just a few years ago. The Innovation Department brings together expertise from across the Firm, allowing a new level of collaboration and a focus on meeting the needs of clients in diverse and dynamic sectors. Our legal knowledge is underpinned by the latest technology to create better insights, better levels of customer service and increased efficiency for our clients.

The practices within the Innovation Department include those that are well established, recognised as being at the top of their game by the legal industry, and those that we have created in recent years as clients have come to us with new problems to solve and value models to create.

We offer a relentless curiosity for our clients\' businesses and sectors, and a passion for finding new ways to help them meet their goals. We have an innate understanding of what drives those creating new ideas, because that\'s what we are doing within our own business every day.

The Team

Protecting and commercially exploiting intellectual property (IP) should be at the heart of most companies\'business strategy. IP is an often under-represented asset, and one which can have a direct impact on the bottom line. We are one of the largest IP teams in London and we help the owners of some of the world\'s best-known rights create, protect and exploit their IP.

Our team provides our clients with a complete range of IP-related services: freedom to operate advice and analysis; patent challenge and enforcement litigation; trade mark and design portfolio management; franchising and licensing, the experience and know-how to take on the role of strategic advisor in pursuit of key business objectives; and handling IP infringements swiftly and tenaciously. Consequently we have a broad range of high profile clients including Sky, Entain (the owner of Ladbrokes and Coral amongst many other gaming brands), Nintendo, Iceland Foods, Dr Reddy\'s, Hewlett Packard and Alexander McQueen.

We are regularly instructed in high-stakes and complex litigation and enforcement work, including ground breaking cases before the UK and EU Courts. Example cases in recent years include: Sky v. SkyKick (CJEU and Court of Appeal), Lupin v. Gilead (CJEU and Court of Appeal), Nintendo v. Sky (first ever blocking injunction based upon technological protection measures), Iceland v. Iceland (EUIPO Grand Board of Appeal), Dr Reddy\'s v. Warner Lambert (largest ever damages claim in the Patents Court under a cross undertaking), Jack Wills v. House of Fraser, and Rihanna v TopShop.

Job Profile

An exciting opportunity has arisen to join our IP Group as a Formalities Manager , to lead our dedicated Formalities Team. The role will suit an experienced Trade Mark Paralegal or Formalities Manager who welcomes the opportunity to take a lead role in the formalities function within a busy and expanding IP team. The Formalities Manager will be supported by a Formalities Paralegal and Solicitor Apprentice, and will work alongside the Paralegal/Trainee team.

The role will include the following duties, which will require the Formalities Manager to work independently as well as part of a team. Excellent written and verbal communication is a pre-requisite, as are organisational and prioritising skills.

Duties and Responsibilities

Management of Formalities Team

• Taking a leadership role in developing a market leading Formalities team.
• Taking a lead role in our engagment with our database and search providers ensuring best practice use of technology within the practice.
• Processing post, communications and managing the trade mark inbox and EUIPO user area, distributing to the team, and updating IPPO and filing email correspondence where necessary.
• Recording deadlines for all matters across the practice on the database.
• Monitoring and managing deadlines.
• Assisting with meeting formal requirements such as POAs, sending documents for notarisation/legalisation.
• Managing renewals.
• Assisting with preparation of draft cost estimates for trade mark filings.
• Managing database of foreign agents and client allocation lists.
• Monitoring and ensuring updates in UK and EUIPO and foreign TM practice are circulated to team.

Special Projects

• Practice transformation projects e.g., identifying and implementing opportunities to streamline workflows, working alongside our Practice Transformation team.
• Responsible for projects recording licences, assignments, and other registrable transactions.
• Preparing client reports, consistently adhering to client specific requirements for customised reports.

Skills/Experience

• Minimum of five years\' experience within a trade marks practice.
• Ability to carry out all aspects of trade mark and design formalities work accurately and to a high standard.
• Experience of taking a leadership role/supervisory role within a team.
• Ambitious, with excellent interpersonal/communication skills, and the ability to build strong relationships both externally and internally across the Firm.
• Excellent IT skills and the interest in using new systems to improve efficiency.
• Ability to prioritise workload and demonstrate flexibility when required.
• Ability to take ownership of formalities management.
• Excellent attention to detail and diligent management of deadlines.
• Ability to work independently without supervision, as well as being able to work as part of a close team.
• CITMA Trade Mark Administrators Certificate.
• Thorough knowledge of IPPO (webTMS), Saegis and Corsearch preferred.

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 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 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: and .

As of 1 January 2023, Mishcon de Reya and 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. , our in-house place of learning, development and new thinking for our people, clients and contacts and our innovative impact strategy, including a , also play a central strategic role in the direction of the firm. In 2020 we launched , a first-of-its-kind sustainability practice providing Environmental, Social and Governance (ESG) advice and purpose-driven insight to clients.

The comprises standalone businesses , , , (in London, Singapore and Dubai) and . 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

Mishcon de Reya