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IP Paralegal @ Simmonssimmons

Hong KongOnsiteFull-time
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About this role

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

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