Trade Mark Paralegal

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About the Company

Spruson & Ferguson is one of the leading intellectual property (IP) service firms operating in the Asia-Pacific region. We have more than 130 years of experience providing a variety of services in the protection, commercialisation, enforcement and management of IP from our offices in Bangkok, Beijing, Brisbane, Hong Kong, Jakarta, Kuala Lumpur, Melbourne, Singapore and Sydney. Our multidisciplinary team of more than 400 people includes some of the most highly regarded IP professionals in the Asia-Pacific region. The team services a diverse client base of Fortune Global 500 companies, SMEs, public sector research organisations, foreign associates and local clients.

Spruson & Ferguson is a subsidiary of IPH Limited, the first IP services group to list on the ASX.

The Role

An opportunity is available for a motivated Paralegal with at least one years’ experience and a keen interest in intellectual property to join our Trade Mark team in Sydney, Brisbane or Melbourne on a full-time basis. Reporting to and working closely with the Principals from the Trade Mark team, the main responsibilities for this role include:

  • Preparing quotes for filing and registering trade marks in Australia, New Zealand, Pacific Islands, foreign jurisdictions and under the International (Madrid) Protocol;
  • Preparing and filing trade mark applications Australia, New Zealand, Pacific Islands, foreign jurisdictions and under the International (Madrid) Protocol;
  • Preparing and filing applications to record assignments, mergers, changes of name, changes of address and claimed interests in Australia using the new B2B recordal software developed by our IT department;
  • Preparing and filing applications to record assignments, mergers, changes of name and changes of address for New Zealand through IPONZ;
  • Lodging other documents such as changes of address for service requests and extensions of time for Australia using B2B or E-Services;
  • Requesting Certified Copies from IP Australia and if necessary, arranging for their notarisation and legalisation by DFAT and the relevant embassies/consulate-general;
  • Obtaining company extracts from ASIC;
  • Preparing Reports & Summaries of Trade Marks owned by clients and checking details thereof; and
  • Assisting our Trade Mark Attorneys as requested.

Over time we envisage that your responsibilities will expand to also cover the following:

  • Preparing and arranging publications of Cautionary Notices;
  • Preparing draft Deeds of Assignments;
  • Registering and renewing Domain names;
  • Registering and renewing Business and Company names; and
  • Attending to Affidavits of Use for clients who have filed trade marks in the USA and Philippines.

Spruson & Ferguson is committed to creating a flexible work environment and we are offering hybrid work options for this position. We welcome individuals who are looking to work in a flexible and collaborative environment.

Skills and experience

To be considered for this position, candidates will have:

  • At least one years’ experience as a paralegal;
  • A keen interest in expanding their knowledge and experience in the field of intellectual property;
  • Solid research skills and a strong analytical ability;
  • Excellent written and verbal communication skills;
  • Strong computer skills with experience in monitoring deadlines using a portfolio database management system;
  • Drive and enthusiasm; and
  • Excellent interpersonal and time management skills.

What we offer

Spruson & Ferguson offers a wide range of benefits aimed at supporting our employee’s ongoing development, including but not limited to:

  • A flexible work environment including working from home;
  • A supportive team-based environment with learning and development opportunities;
  • Health and well-being programs; and
  • Paid parental leave for all genders.

Spruson & Ferguson is committed to promoting and maintaining a workplace culture of shared respect to enable us all to feel valued and be the best we can be.

How to apply

Take the next step in your career and apply now by clicking the APPLY button. Please include your resume and a cover letter that outlines your eligibility for the role in your application.

We encourage applications from Aboriginal and Torres Strait Islander people and individuals from diverse backgrounds. We remain committed to providing reasonable and fair adjustments to provide a positive, barrier free, transparent recruitment process and supportive workplace.

Only shortlisted candidates will be contacted directly.

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