Roy Scott, Keltie LLP’s Senior Paralegal and a member of the ITMA Seminar Working Group, recently had an article published in the ITMA Review regarding the role of paralegals. Here is a copy.

The Oxford Dictionary definition of the role of a paralegal is “a person trained in subsidiary legal matters but not fully qualified as a lawyer” – an interesting definition that is interpreted in many different ways in both the UK and US.

It also provided a stimulating topic for discussion at ITMA’s July and August roundtable discussions for Trade Mark Administrators. ITMA President Chris McLeod opened proceedings by addressing the audience and giving his interpretation of the role of a paralegal and how this varied from firm to firm. To highlight this point, the later discussions were focused around the role of a paralegal in-house, in a law firm and in a Trade Mark Attorney business.

Three speakers were lined up to provide the attendees with insight into their differing roles. First was Debbie Hallissey, an in-house Paralegal from Norgine. Hallissey’s role could be considered to be specialised given the pharmaceutical nature of the business. She mentioned how she started out as a patent secretary, before moving into the patent formalities department. Following a short break from work, Hallissey rejoined the profession and started to focus on a career in trade marks. Hallissey’s day-to-day paralegal duties are varied, and cover the whole life cycle of a trade mark, from filing through to registration and renewal. In addition, she highlighted areas of her duties that could be considered to be primarily in-house, such as, divestments, management reporting, parallel imports, name creation, branding guidelines and checking artwork for products. Because Norgine is a pharmaceutical company, various regulatory constraints have to be adhered to. For example, it is vital to identify the differences between a parallel import and the real product. Hallissey’s role in this process includes conducting an initial review of the parallel import, reporting any differences to her supervisor and agreeing on what action, if any, that needs to be taken. This proved to be an area of particular interest to the attendees, as many of them had not come across this type of work in their roles.

Complex career

It was my turn, then, to provide the second presentation of the session. My career spans several decades and includes paralegal roles in the Government, a Trade Mark Attorney business and a law firm, and I spoke specifically about the third role. My presentation highlighted how a law firm paralegal could be providing corporate support one day, for example in the form of a due diligence exercise following a merger or acquisition, and the next be handling regular filing of trade mark applications at the UK IPO, OHIM and overseas. My duties also covered searching, reporting (acceptance, publication, registration, renewals) and handling registerable transactions, such as assignments and licences. One interesting point I aimed to highlight was that paralegals in law firms tended to be treated as fee-earners with hourly charge-out rates and billable targets. So understanding Law Society accounting rules with regard to billing was essential in this role.

Tanya Buckley, a qualified Trade Mark Attorney from RGC Jenkins, completed the speaker line-up. She talked about her time as paralegal in a Trade Mark Attorney firm and how she was able to make the transition to being a qualified Trade Mark Attorney. Buckley gave a whistle-stop tour of her career, which saw her start as a billing clerk, progress to a Trade Mark Administrator and move on to become a trade mark searcher, before obtaining a role as a trainee Trade Mark Attorney. She provided her own interpretation of the term paralegal as “someone who is not a qualified attorney but assists an attorney in numerous tasks”. She also pointed out that there is no specific qualification in the field for a paralegal and highlighted that the paralegal structure in the UK is less rigid than it is in the US.

The three presentations and subsequent discussions proved that there were similarities in the type of tasks carried out by paralegals, including reporting, filing, advertisement, registration and preparing costs estimates for recording changes of name, address, assignments or licences. Paralegals can also be involved with notarisation, legalisation, preparation of evidence and preparing invoices. But what became abundantly clear was that the role of the paralegal not only varies from firm to firm, but can vary from individual to individual within a business.

Uniting principles

All paralegals need to have excellent time management and organisational skills, with a keen eye for detail. They can be involved in various aspects of the running of a business, such as the practice management system, business development and have direct client contact. What is also important, for a paralegal to have a varied and exciting career, is to find a mentor. This should be someone who is willing to encourage their development and is keen to provide the paralegal with duties that may not be considered part of their everyday role. By the same token, the paralegal needs to be proactive in seeking a Trade Mark Attorney who can act as a mentor, for instance by volunteering to do tasks that are not part of their current duties or doing that little bit extra with regard to an existing job for which they are already responsible. However, it is not always possible to do this, as certain working environments are not flexible enough to allow roles to be interchangeable and fluid. That being said, there is no harm in asking, and that appeared to be the main concern of the paralegals at the roundtable: the inability to get exposure to other roles to expand their experience and knowledge base.

Roy Scott 2 December 2014

This article first appeared in the October/November 2014 edition of the ITMA Review