Karen Leung

Halifax

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“I am head of records and renewals with Appleyard Lees, but didn’t start off in that role. I joined as an office junior fresh from school at the age of 18 back in the late 1980’s, where computers comprised of big box hard drives, huge monitors and where floppy discs and telex machines were commonplace and knowing absolutely nothing about the IP profession.

I was keen to learn though and started off by taking care of the usual junior tasks such as making the drinks, collecting lunch and dealing with the outgoing mail which included trekking to the central Post Office in Halifax to ensure the end of day Patent Office envelopes including fee sheet was safely on its way by special signed for delivery. The Patent Office envelopes which contained new patent applications that had priority dates were triple checked – by me, the office manager and finally signed off by a Partner at the end of each day and had Cellotape safely attached around all four edges of the brown paper envelope as we did not have Tyvek envelopes in our stationary cupboard back then. So, it was drummed into me at a very early stage how extremely important getting this envelope to the Post Office was!

After a year in this role I decided that I fancied a shot at being a secretary so one day I finally plucked up the courage to speak with the senior partner at the time (who incidentally scared the living daylights out of me) and asked if I’d be considered for any upcoming secretarial position. Luckily, I didn’t have long to wait as a trainee attorney soon became qualified I was assigned as his new secretary and so we learnt together. Back then at Appleyard Lees the secretary undertook all the types of work we associate with IP administrator and paralegal roles that we see today from creating files, filing correspondence, typing patent specs, preparing forms and assisting the attorney with all manner of administration duties where accuracy and attention to detail is essential.

Having the practical experience starting from an office junior at day one has enabled me to gain the very basic knowledge of the IP profession through to the administrative and paralegal roles and so moving into the renewals department after 11 years of being a secretary became a natural progression for me. I was then able to deal with post grant/registration formalities too as well as having the responsibility of dealing with all the incoming official post and diarising the entries into each fee earners diary.

Not long after joining the renewals department, CIPA introduced a course and examination specifically for IP administrators so I asked if I could enrol myself on the course and take the end of year examination. Soon after, CITMA also introduced their version so I enrolled on this course the following year and took the examination upon completion. These courses and qualifications enhanced my practical experience so that I felt much more confident in my everyday life at work where accuracy and attention to detail and having the ability to organise and prioritise workload within a busy, deadline driven environment is essential.

After 9 years working as a renewals administrator/paralegal I was given the opportunity to take up the role as manager due the then manager taking retirement. I remember being extremely nervous and unsure about taking on this role having never had any management qualifications or experience but was persuaded and reassured by the managing partner that I was more than capable of taking on the role due to my previous experience within the firm. I was assured that I would have the full support of the partners and would also have a designated partner who I could approach at any time for professional guidance and an ear to bend should the need arise!

My role of head of records and renewals is varied but comprises the day to day management of our renewals and records database as well as training team members and also maintaining the internal procedural manual to ensure that standard procedures are documented and adhered to. Keeping up to date with IP law and legal and procedural developments and implementing necessary changes within the department. Regular quality checking of the database data. Monitoring pricing (any increases in foreign fees and/or associates fees). Monitoring upcoming costs and ensuring funds available in various accounts (UKIPO, EPO, EUIPO). Responsible for the monitoring and processing of renewals, including reporting and contacting clients for instructions and monitoring due dates for large company clients who require bespoke handling. Undertaking formalities based work where necessary at time of renewal, including the preparation and recording of change of company name and assignments, arranging documents to be legalised when required. Advising attorney/teams as to forthcoming renewal deadlines when client instructions not received and advising of any late payment deadlines. Ensuring records are easily accessible when needed and responsible for destroying or archiving finished files in accordance with the company file retention policy.

Now, in my 28th year at Appleyard Lees I have seen many changes and I have enjoyed the diverse and challenging work along the way. I am proud to be a part of the IP profession and thoroughly enjoy working at Appleyard Lees who have allowed me to develop my skills through training and who provide a supportive and friendly working environment.”

IP Administrator & Manager of Renewals Department / Appleyard Lees IP LLP/ Halifax

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