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

ABOUT QUISUMBING TORRES

For more than five decades, we have helped top multinational and domestic companies drive their growth in the country. We provide global reach with deep local roots, delivering exceptional and effective legal advice and assistance to clients across borders seamlessly.

In 1963, the Firm was established as Collas and Guerrero, and later became known as Quisumbing Torres.

As part of Baker & McKenzie’s global network with more than 12,000 people in 77 offices in 47 countries, we offer market insight and international experience that few firms in the Philippines can match.

With our team of more than 50 Philippine lawyers, we are a full-service firm, advising clients in the Banking & Finance, Corporate & Commercial, Dispute Resolution, Employment, Immigration, Intellectual Property, and Tax practice areas. More specifically, we are able to deliver industry-specific advice on:

• Aviation, Aerospace & Defense
• Chemicals and Plastics
• Construction & Building Materials
• Consumer Goods & Retail
• Energy & Utilities and Climate Change
• Financial Services
• Food & Beverage
• Hotels, Resorts & Tourism
• Infrastructure
• Insurance
• Information Technology
• Manufacturing & Wholesale
• Media & Entertainment
• Mining & Metals
• Oil, Gas & Petrochemicals
• Pharmaceuticals & Healthcare
• Real Estate (including REITs)
• Services (including Outsourcing)
• Telecommunications
• Transportation & Logistics

Please refer to job description.