POSITION SUMMARY

Performs duties such as: (i) conducting searches on trademarks, patents, designs, utility models and copyrights; (ii) preparing and filing new applications and other documents/forms required by the Intellectual Property Office (IPO) and the Plant Variety Protection Office (PVPO); (iv) monitoring prosecution and maintenance deadlines; (v) providing status reports; and (v) preparing draft letters, emails, responses or advice to clients, for review by lawyers or manager.

MAJOR DUTIES AND RESPONSIBILITIES

• Supervises the clients’ trademarks, patents, designs, utility models, copyrights and other intellectual property rights, as well as plant varieties (IP)portfolio of accounts assigned by the manager
• Prepares draft email responses/advice to clients' queries on IP matters and forwards them to the Associate for review
• Prepares draft filing letters and/or email reports and forwards them to the Associate for review, including the following:
  • Quote request – prepares fee quotes for IP services on the assigned accounts
  • Searches – conducts online searches using the IPO Online Database, ASEAN TM View and WIPO Online Database for any identical or confusingly similar registered IPs and/or internet usage by third parties; drafts search reports.
  • Trademark application up to Registration - Prepares online applications, powers of attorney, official action (OA) reports and responses, approval and reply briefs, petitions for review, voluntary withdrawal / cancellation, requests for amendments, corrections or reissuance, reports on all E-Gazette publications, and certificates of Registration; attends to other notices issued by the IPO or PVPO.
  •  Renewals – prepares renewal filing letters, OA renewal reports, requests for amendment/correction, reports on Notices of Issuance, and Certificates of Renewal of Registration
  • Declaration of Actual Use (DAU) – prepares requests for extension to file DAU, attends to 3-year, 5-year, Renewal DAU, including their proof of use; prepares OA report on DAU, and responses and/or requests for extension.
  • Recordals (assignments, change of name, change of address, merger, licenses and any other document affecting the title) – attends to requests for recordal, prepares OA reports on recordal, and responses and/or requests for extension
  • Miscellaneous – drafts manifestations, motions, petitions, appeals, supplemental filing letters; including review of draft bills and WIP reports.
• Prepares and reviews filing reports/reminders and transmits the same on behalf of the Partners handling the accounts.
  • Reports for all filed documents described above except OA Report, E-Gazette Publication, Certificate of Registration/Certificate of Renewal Registration
  • 3Y/5Y/Renewal DAU Reminders
  • 3Y/5Y/Renewal DAU Acceptance
  • OAP Report Reminder
  • Approval / Grant of Extension
  • Approval / Grant of Suspension of Action
  • Renewal Reminder
  • Second and Final Reminders for DAU, Renewal, Extension
  • Recordal Confirmation
• Coordinates with the Records Administrator for the creation of new records or other information that needs to be updated in the GIPM and/or Symphony
• Updates the weekly “Due Dates Report” for purposes of the CDIT (PG) Regular Meetings twice a month
• Monitors deadlines every day and coordinates with the assigned Records Administrator, when necessary.
• Performs other related duties as may be assigned from time to time.

REQUIREMENTS OF THE JOB

EDUCATION

Bachelor’s/College Degree in Business Studies/ Administration/Management, Political Science, Humanities/Liberal Arts, Law (preferable), any science or technical course (preferable), or equivalent

EXPERIENCE

At least 2-5 years of working experience in law/legal services as paralegal/legal assistant.

SKILLS / COMPETENCIES

• Excellent oral and written communication skills
• Has time management skills; meets deadlines and can prioritize important tasks
• Results-oriented, organized, keen to details, and trustworthy
• Can work under pressure
• Extensive experience in IP-related work is preferable.
• Computer-literate
• Knowledgeable in MS Office applications
• Good in planning and organizing work