Trademark Attorney & Coordinator/Supervisor

Duties and Responsibilities
•    Independently Coordinating and supervising all intellectual property prosecution related works
      including but not limited to all the procedures regarding application, assignment, disputes,
      oppositions, cancellations, registrations, etc.;
•    Carry out national and international searches to see if the proposed trade mark is already in use;
•    Advise clients how to choose and register trademarks; promote new Trademarks;
•    Advise on other intellectual property issues like design and copyright;
•    Tasks assignment to TM Attorneys and Assistants;
•    Quality check of Attorneys and Assistants work;
•    Supervise daily work;
•    Draw up contracts;
•    Register trade marks on client's behalf;
•    Deal with the region (China) and overseas registration authorities;
•    Advise clients how to use and protect trademarks;
•    Negotiate in disputes, and take action if the client's trade mark rights are being broken;
•    Handle renewals of existing trademarks, transfer of ownership and licensing;
•    Preparing submissions and grounds for all related Trademark prosecution work;
•    Gathering, assessing and organizing evidence;
•    Preparing draft response to clients addressing questions and concerns and proposing proactive
      solutions;
•    Liaising with officials, maintaining files and databases;
•    Monitoring deadlines for files assigned and files within the team;
•    Maintaining communications and relationship with external Agents;
•    Monitoring trademark Office database for infringing applications;
•    Performing necessary translations;
•    Meeting assigned billing targets.

Background
•    Chinese National
•    Bachelor degree or above preferred. Major in English or Law
•    Excellent written and oral English
•    5+ years' experience in the IP Field and 2 years working as a trademark agent, preferably in
      international law firms
•    2+ years' experience in managing people
•    Proven experience in managing work assignment, managing the activities and the billing
•    Experience in handling Patent cases preferred
•    Team working attitude
•    Excellent attention to detail, proactivity and confidentiality
•    Able of working under pressure and meeting tight deadline
•    Good negotiating and teamwork skills

TM Attorney & Coordinator/Supervisor short term main performance objectives (3 months)
•    Billing: manage the department billing process, monitor the TM department activities and find
      improvements to increase the billing;
•    Team management: improve the business experience by effectively manage the work assignment to
      the Attorneys (also in relation to the client managed by them and their peculiarities );
•    Business development & expansion: define and agree with the GM and Partners the department's
      strategy: find new work opportunities from existing clients and new clients;
•    Infringing Trademark application for similar marks: increase the applications (sightings) sent out to
      clients and potential clients to 300 per month; monitor and improve the process for the search for
      infringing marks into the TM Gazette;
•    Trademark monitor list: build and keep updated a list of Trademarks with the related marks and
      brands as a main tool for monitoring the infringing applications;
•    Interpersonal skills: build a solid relationship with all managers and employees. Create a
      trust relationship so that managers and employees are motivated to perform and feel comfortable to
      exchange ideas.

Apply
Interested candidates please send detailed resume to hr@ferrante.asia
or contact our HR at +86 21 63232619/+86 10 84464995