IP Trademark Specialist

The IP Trademark Specialist will provide support to the Firm's North American Brand Management practice. We have a high volume of trademark and project work in a deadline-driven environment. The primary focus of the IP Trademark Specialist will be to attend to renewal and maintenance filings on a global basis.

In addition, the role holder will support the existing timekeepers with specific tasks, including preparing reporting emails to clients on renewal work.

Responsibilities:

• Manage renewal requests from clients, liaising with agents in connection with the renewals, as well as preparing documentary requirements for different jurisdictions, including using templates to prepare draft powers of attorney and certificates for review by BM legal teams
• Support diverse trademark prosecution tasks, including assisting with assignment recordal projects, providing, preparing, and instructing trademark applications in various countries, and instructing and reporting searches. 
• Coordinate, analyze, and process incoming correspondence relating to IP matters received from Baker McKenzie offices, IP clients, and outside global law firms
• Identify key deadlines and update client records accordingly using an electronic IP management system
• Create records and coordinate IP matter work plans to relevant IP attorneys based on new instructions received from IP clients and Baker McKenzie managing offices
• Docket and review actions relevant to the client's trademark portfolio management
• Communicate via email with internal colleagues and clients of the NA offices
• Manage own workload by allocating work items based on the order of priorities
• Keep leaders and other colleagues informed in advance of deadlines and workload
• Always provide a proactive administrative service encompassing all key tasks without requiring prompting and thinking ahead to anticipate the department’s needs
• Apply knowledge to suggest improvements to processes and provide appropriate feedback. Demonstrates the ability to have difficult conversations in the context of renewals or otherwise
• Closely coordinate with NA colleagues and leaders on issues that may affect trademark rights
• Respond appropriately and promptly to feedback received and take necessary action to implement

Skills and Experience:

• A bachelor’s degree with good academic credentials
• Practical experience with a proven track record in providing back-office IP support to the Global IP Practice Group's clients and managing Baker McKenzie offices within a medium- to large-sized IP portfolio.
• Solid experience in using electronic databases and applications, which are designed for the maintenance of an intellectual property portfolio.
• In-depth knowledge and expertise of IPSU's processes as well as IP rules and procedures.
• Strong problem-solving skills and effective decision-making skills, providing solutions with the business objectives in mind.
• Above-average communication skills, both written and oral
• Able to prioritize and work independently with limited supervision
• Able to stand pressure and work beyond normal working hours
• Able to maintain the highest level of confidentiality
• Quick learner and has a keen eye for detail
• Has a strong sense of responsibility, initiative, integrity and commitment to work
• Able to multitask to prioritize, and produce quality results under significant time constraints
• Strong team player with excellent analytical and interpersonal skills, able to effectively deal with and manage people at all levels
• Understanding of the client’s business and how IPSU contributes to the delivery of its services
• Effective presentation and client relationship skills
• Able to write reports containing technical information as well as management reports
• Must be able to work on a flexible schedule, including days, nights, weekends, and holidays as may be required
• Proficient in MS Office Applications, particularly Word, Excel, Outlook, and Internet