IP Paralegal

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