Trade Mark Paralegal

About Us

At Griffith Hack, we’re using the lens of IP to give clients a fresh perspective on markets, business opportunities, innovation and brands.

Beyond simply protecting IP, we help businesses grow through focusing on the outcomes that support commercial sustainability and innovation.

Part of the IPH Group, we are an established IP services firm with a long history and national presence. Our team is made up of high performing individuals and world class experts who seek to understand our clients’ needs with curiosity and attentiveness. We are rapidly growing and are constantly seeking innovators to join us.

Who We Need

This position requires someone with specialist skills within the Intellectual Property field, specifically within trade marks, who is detail-oriented, organised and responsive to deadlines. The purpose of this role is to provide professional support to the Trade Mark practice group and to assist the firm in delivering a quality service to its clients in an efficient and cost-effective manner.

Location: Melbourne/Sydney/Brisbane/Perth

Key Accountabilities and Responsibilities

The purpose of this role is to perform trade mark law work under the supervision of practicing fee earners, including:

• Assisting with trade mark portfolio management, including drafting emails and standard reporting letters to clients and overseas firms
• Preparing and filing trade mark applications
• For straightforward cases - receiving, reviewing and responding to an Examiner’s report, entering surveillance records, reporting to client
• Reporting notices of acceptance and forwarding certificates of registration to client
• Assisting with trade mark watch services and updating action reports for clients
• Preparing and filing extensions of time of acceptance date
• Preparing letter and requesting deferment of acceptance
• Liaising with Trade Marks Office for updates
• Attending to Recordals (assignments, change of name/address, mergers, etc) – for AU and NZ Trade Marks Office (single and multiple cases) and for local clients
• Preparing and filing standard procedural documents with the Trade Marks Office
• Preparing draft responses to trade mark filing enquiries including preparing cost estimates for domestic and international registrations and liaising with overseas firms for relevant filing information
• Processing trade mark renewals with local IP Office, and liaison with overseas firms to ensure the processing of renewals in foreign countries where applicable

Experience & Skills

• A minimum of five (5) years’ experience in the IP field as a Legal Assistant or similar operations role
• Strong knowledge of the steps in the trade mark prosecution process for IP Australia, IPONZ and WIPO
• Strong knowledge of IP Australia and IPONZ & WIPO trade mark platforms
• Experience using Inprotech (a specialised IP database) and finance software, or similar software
• Technical skills using Microsoft Office Suite, Outlook, Word, PowerPoint and Excel
• A practical, service driven, resilient style with a high level of maturity and a grounded approach
• High level of maturity with confidence to ask for direction when instructions are unclear
• Ability to independently and pro-actively complete tasks and projects as directed
• Excellent verbal and written communication skills
• Strong analytical and critical thinking skills
• Strong work ethic with a ‘can do’ attitude

How To Apply

If either of these roles sound like you, and you have work rights in Australia, we’d love to talk. Please email HRgriffithhack@griffithhack.com.au with:

• Your CV & Contact Details
• Why you are interested in this position

Note: This description is an indication of the minimum responsibilities required of the position. It is not intended to define specific duties or responsibilities, or to limit or modify the right of management to assign and direct the work of staff under supervision. It should not be taken to exclude other duties not mentioned that require a similar level of competency or to limit growth or change of responsibilities within the role over time to align to business needs.