Senior IP Docketing & Client Transition Specialist

Venable LLP•New York, NY

6d•$120,000 - $130,000

About The Position

The Senior IP Docketing & Client Transition Specialist serves as the IP Division’s subject-matter expert for complex intellectual property portfolio intakes and transfers, providing authoritative technical guidance on related issues. The role manages trademark and patent onboarding and outgoing transfer projects, coordinating with legal teams, clients, counsel, and firmwide support departments to complete the required data, file, matter-opening, and matter-closing work. The specialist also provides flexible docketing support across the Trademark and Patent Docketing Teams. Responsibilities include analyzing correspondence, maintaining accurate docket data and deadlines, supporting docket-entry processing, preparing reports, and leading data validation, docket audits, remediation, and quality-assurance initiatives. The role requires independent management of complex, high-volume projects, sound judgment with deadline-sensitive information, and flexibility to work overtime as needed. Work is mainly sedentary in an office or remote work environment, as applicable. The posting gives a New York, NY annual pay range of $120,000–$130,000, with exact compensation dependent on qualifications and location.

Requirements

At least four years of trademark and patent docketing, prosecution support, and intake or transfer work, preferably in a law firm, with demonstrated experience in both trademark and patent docketing.
Bachelor’s degree, technical training, or an equivalent combination of education and relevant experience.
Working knowledge of U.S. and foreign trademark and patent rules, practices, prosecution procedures, and deadline concepts.
Proficient knowledge of trademark and patent docketing procedures and workflows, and experience using and maintaining an IP docketing system.
Advanced ability to audit trademark and patent file histories, bibliographic data, prosecution status, correspondence, and deadline information to identify discrepancies and determine appropriate next actions.
Proficiency researching U.S. and non-U.S. Trademark and Patent Office websites and other electronic sources to locate and validate matter information.
Ability to independently manage complex, high-volume projects and competing priorities.
Meticulous attention to detail, accurate data-entry skills, strong organizational abilities, and sound judgment when handling deadline-sensitive information.
Excellent oral and written communication skills and ability to collaborate with attorneys, business professionals, clients, foreign associates, prior and new counsel, vendors, and firmwide support departments.
Strong proficiency with Microsoft Word and Excel, and familiarity with document-management systems and electronic file environments.
Ability to work independently and proactively with minimal direction and to recognize when consultation or escalation is appropriate.
Flexibility to work overtime as needed.
Ability to work effectively under pressure and adapt to changing priorities and practice needs.
Accountability, ownership of assignments, sound judgment, and a high level of internal and external client service.
Ability to work collaboratively on the IP Operations Team and provide flexible support across the Trademark and Patent Docketing Teams.

Nice To Haves

Completion of continuing education courses or trademark and patent training programs.
Experience with CPi or a comparable IP docketing system.
Project management experience or training.

Responsibilities

Serve as the IP Operations subject-matter expert and point of contact for trademark and patent intake projects, from receipt of onboarding instructions through completion.
Maintain the intake and transfer tracking system and monitor project status, outstanding items, next actions, and follow-up requirements.
Review and triage incoming trademark and patent files and electronic data, auditing prosecution status, file histories, bibliographic and ownership information, deadlines, and next actions.
Coordinate with legal teams, clients, prior counsel, foreign counsel, and firmwide support departments to obtain documents, correspondence, data, assignment information, and other onboarding information.
Establish conflicts and new-matter opening requests and confirm that appropriate IP document-management folders and matter structures are created.
Assist legal teams with preparation and filings upon request.
Serve as the subject-matter expert for outgoing trademark and patent transfers and follow firm procedures for transferring electronic and physical files.
Audit matters being transferred out, including prosecution status, deadlines, docket information, matter data, and file completeness, and coordinate resolution of discrepancies.
Coordinate with legal teams, clients, new counsel, billing personnel, Records, Finance, and other departments to complete transfer and matter-closing requirements.
Prepare and transmit transfer correspondence, matter data, reports, and file materials, and track acknowledgments and outstanding follow-up items.
Provide flexible docketing support to the Trademark and Patent Docketing Teams based on workload, priorities, and department needs.
Analyze client, attorney, foreign associate, and Trademark and Patent Office correspondence, and accurately update the docketing system with relevant data, deadlines, reminders, and bibliographic information.
Process and clear critical and non-critical docket entries in accordance with procedures, country law, client guidelines, and departmental policies.
Generate, review, and proof routine and special docket, status, transition, discrepancy, quality-assurance, and client reports.
Lead data validation, docket audits, remediation projects, and ongoing docket-hygiene and quality-assurance initiatives.
Lead large or complex portfolio intake and transfer data-remediation projects, determining the project approach and exercising decision-making authority.
Identify workflow and data issues; recommend practical solutions; and develop, document, test, and maintain procedures, including intake and transfer SOPs.
Work independently and proactively with minimal direction while recognizing when consultation or escalation is appropriate.