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IP paralegal work outside India : an overview

November 15, 2021
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This article has been written by Oishika Banerji of Amity Law School, Kolkata. This article provides necessary information about IP paralegal work outside India.  

Introduction 

A paralegal is a person who is qualified to undertake substantive legal work through education, training, or job experience. This necessitates a working grasp of legal ideas before undertaking responsibilities of a professional lawyer. In the United States and the United Kingdom, paralegals are quite active. They are also well compensated. Because the bar exam abroad is difficult, few people pass it, and they all majorly end up working as paralegals. There are numerous options available to you while pursuing your legal degree. Working as a paralegal may appear to be an excellent method to break into a firm. Intellectual property is an emerging branch of law that demands a lot of skills, qualities, knowledge from the lawyers, and therefore if you begin your career in IP as a paralegal instead of directly becoming a lawyer, it will not only be beneficial for you in terms of experience but will also make you knowledgeable before you take the pilot seat.

For additional information on this topic refer to: 

  1. https://lawsikho.com/blog/why-ip-paralegal-jobs-are-your-gateway-to-an-international-ip-career/.
  2. https://blog.ipleaders.in/job-opportunities-in-ip-law-in-canada/.

United States of America 

IP paralegals assist IP attorneys in completing client tasks. IP paralegals must always work under the supervision of a practicing attorney because they are not attorneys and have not been admitted to the patent bar or the bars of any state. The tasks that an IP paralegal may be assigned depending on the sort of attorney for whom they work. An IP paralegal who works for a patent prosecutor may assist in the preparation of documents to be filed with the US Patent and Trademark Office in conjunction with a patent application for a novel scientific invention. However, an IP paralegal who works for a copyright attorney, can assist the attorney in obtaining a copyright for a novelist who has just finished writing a new book. 

LawSikho has launched a US Intellectual Property Law and Paralegal Studies Course to help paralegals acquire remote international jobs. The same can be accessed here:  

IP paralegal (Trademark)

  1. Attorneys in IP law (i.e. Intellectual Property, primarily trademarks, designs, and copyrights) and related branches of law are supported, and their files are followed up on advice on IP matters, searches, filing of trademarks, domain names and designs, conflict handling, etc. 
  2. Letters and official documents are written, legal file preparation, file administration and follow-up, pricing quotations, invoicing, and billing follow-up. Input into the database that is accurate. Clients are to be contacted by phone, e-mail, or in person, collaboration with your coworkers, deadlines are to be monitored independently, management of the administrative office.

IP paralegal  or legal assistant

  1. Prosecution of patents and trademarks, including electronic filing of US applications and recording responses (US and PCT). 
  2. Handle general prosecution timelines for each, foreign applications and responses, IDS, assignments, prior art, and other support documents; daily docketing system maintenance/operation, including docketing of all prosecution and due dates for all patents, annuities, and trademarks.
  3. Maintaining and generating docket reports for attorneys, legal support for discovery, researching, and basic due diligence, transactional support with scanning, review for critical dates, and ensuring timely response for correspondence.
  4. Paralegals or legal assistants are listed as one of the most in-demand jobs in Canada. Provinces such as Manitoba and Nova Scotia are struggling to fill the labour demand for legal assistants, which has led to provincial governments to start the global recruitment process for highly skilled foreigners who want to immigrate to Canada. Paralegals can earn a very attractive salary in Canada, earning up to $71,000 per year, according to Payscale.

Junior IP paralegal 

  1. Multiple patent attorneys/agents will be supported, and the applicant will handle the US and international dockets, help with the US and foreign patent filing and prosecution, manage attorney/agent calendars, coordinate meetings, and plan travel. 
  2. Will help in-house counsel with the preparation, filing, and prosecution of US patent applications, including the preparation and submission of Office Action replies, Information Disclosure Statements, Amendments, and RCEs, and the drafting and execution of formal documents (Declarations, Assignments, Powers of Attorney).
  3. Prepare meeting agendas, travel plans, and cost reports. Further, write letters, memoranda, and email correspondence to in-house attorneys/agents and colleagues on their own.

United Kingdom

In the United Kingdom, the number of paralegal employment is growing as more law companies realize that certain sorts of work do not require personnel to be professionally qualified, which saves money and keeps lawyers pleased. 

A list of IP paralegal work in the United Kingdom can be accessed here

IP paralegal 

  1. The applicant will be assisting top-tier employees that have a bright future ahead of them, will be involved in filing, modifying, and preparing patent applications in the United Kingdom and the European Union. 
  2. Liaising with senior fee earners and keeping them up to date on critical situations. Creating a variety of formal letters and messages for clients, adding needed information to the firm’s DMS, management of one’s diary. 

IP firms and job of an IP paralegal 

A well-known law firm with a burgeoning IP practice is always in need of a paralegal. You’ll assist them with the day-to-day operations of the office and be involved in client portfolio management. Because of the flexible working structure, you will have the chance to collaborate with all members of the team, ensuring that your responsibilities stay varied. Some of the major responsibilities of an IP paralegal in a law firm are:

  1. Preparing and sending client emails/letters and reports;
  2. Managing all client file administration, including mailing bills and regular reminders to clients/foreign attorneys, as well as updating schedules;
  3. Keeping an eye on surveillance services and doing exploratory searches across a variety of platforms;
  4. Keeping all pertinent communications and attorney schedules/deadlines up to date in the firm’s internal systems;
  5. Preparing tenders/pitches, including all essential presentations, and drafting commercial bids with conditions of engagement;
  6. Creating sophisticated multi-case, multi-jurisdiction invoices, and cost estimates. 

IP (Patent) paralegal

  1. Assisting to produce cost estimates for clients to undertake a recordal project using the  “cost calculator” tool.
  2. Adapting standard procedures and work-flows vis-a-vis the firm’s offshore support center to suit individual client and project requirements.
  3. Managing overall project delivery and being the first point of contact for any queries they need to escalate.
  4. Keeping an oversight of the project to ensure it is completed on time and within the allocated budget.
  5. Drafting documents, liaising with clients, trouble-shooting.
  6. Conducting patent research via Patent and Trademark Office and private databases.
  7. Performing preliminary patent searches, requesting comprehensive search reports from agents/search vendors, and performing internet investigations regarding search results.

An IP (Patent) paralegal job offer can be accessed here

Salary of IP paralegal 

  1. According to the Bureau of Labor Statistics (BLS), the national average annual compensation for a paralegal is $54,500, which is somewhat higher than the average annual wage for all professions, which is $51,960. As a paralegal, you may earn a little more than $54,500 in some areas, but you must choose the correct jurisdiction. 
  2. The average IP paralegal salary in Chicago is $62,681 as of October 29, 2021, but the range typically falls between $55,435 and $70,776. Salary ranges can vary widely depending on many important factors, including education, certifications, additional skills, the number of years you have spent in your profession.
  3. The average salary for an Intellectual Property (IP) paralegal in the United Kingdom is £27684. As of March 03, 2021, the average Intellectual Property (IP) paralegal pay in the United Kingdom is £31,873, with a salary range of £24,166 to £42,270. Salary ranges rely on a variety of things, including schooling, certifications, supplementary talents, and the number of years you’ve worked for in that field. 

Conclusion 

A paralegal is an essential member of any legal team. They assist lawyers during trials and in case preparation. Because paralegals are taking on additional responsibilities that were previously assigned to legal secretaries and entry-level lawyers, they are at the core of the law business. As has been discussed in this article and the additional websites cited, the work opportunities of IP paralegals outside India are immense and several, and therefore one interested in the IP field can pursue being a paralegal before entering into the main profession. 

References 

  1. The paralegal conundrum
  2. Paralegal Jobs in the United States
  3. Staff & Paralegal Job Opportunities
  4. IP Paralegal Job Description | LawCrossing.com
  5. Paralegal Jobs | Major, Lindsey & Africa

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