Senior IP Docketing & Client Transition Specialist

Venable•Washington, DC

3d•Remote

About The Position

Venable is seeking a Senior IP Docketing & Client Transition Specialist to serve as the IP Division’s subject-matter expert for complex intellectual property portfolio intakes and transfers and provide authoritative technical guidance on IP intake and transfer issues. The position is fully remote and provides flexible support to the Trademark and Patent Docketing Teams according to workload, priorities, and departmental needs. The specialist manages trademark and patent portfolio onboarding and outgoing transfers, including tracking project status, auditing files and data, identifying and resolving discrepancies, coordinating with legal teams, clients, counsel, and firm support departments, and completing matter-opening, transfer, and matter-closing requirements. The role also provides docketing support, updates docketing systems, generates and reviews reports, and leads data-validation, audit, remediation, and quality-assurance initiatives. Candidates should have at least four years of trademark and patent docketing, prosecution support, and intake/transfer experience, along with knowledge of U.S. and foreign IP procedures and deadline concepts. The role requires strong project-management, communication, organizational, research, and data-auditing skills; proficiency with Microsoft Word and Excel; and the ability to work independently, handle competing priorities, and exercise sound judgment with deadline-sensitive information. A bachelor's degree, technical training, or an equivalent combination of education and relevant experience is required.

Requirements

At least four years of trademark and patent docketing, prosecution support, and intake/transfer work, preferably in a law firm, with demonstrated knowledge and experience in both trademark and patent docketing.
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, 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 manage complex, high-volume projects and multiple competing priorities independently.
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 identify workflow and data issues, recommend practical solutions, and develop, document, test, and maintain procedures.
Ability to work independently and proactively with minimal direction while recognizing when consultation or escalation is appropriate.
Bachelor's degree, technical training, or an equivalent combination of education and relevant experience.
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 as part of a high-functioning 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 subject-matter expert and IP Operations point of contact for trademark and patent intake projects, from receipt of onboarding instructions through completion of onboarding activities.
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 information, ownership and chain-of-title information, upcoming deadlines, and next actions.
Communicate with legal teams, clients, prior counsel, foreign counsel, and firmwide support departments to obtain documents and information required to complete onboarding.
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 transfer projects and follow firm procedures for transferring electronic and physical files.
Audit matters being transferred out, including prosecution status, upcoming deadlines, docket information, matter data, and file completeness; coordinate resolution of discrepancies before transfer.
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 to new counsel or clients, and track acknowledgments and outstanding follow-up items.
Provide flexible docketing support to the Trademark and Patent Docketing Teams based on workload and department needs.
Analyze client, attorney, foreign associate, and U.S. and foreign Trademark and Patent Office correspondence; 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, applicable 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, determine project approaches, and exercise decision-making authority.
Identify workflow and data issues, recommend practical solutions, and develop, document, test, and maintain procedures, including intake and transfer Standard Operating Procedures.
Work independently and proactively with minimal direction, consulting or escalating when appropriate.
Provide collaborative support across the IP Operations and Trademark and Patent Docketing Teams.

Benefits

Medical insurance
Dental insurance
Vision insurance
Disability insurance
Life insurance
Flexible spending and healthcare savings accounts
401(k) with firm profit share
Paid time off
Firm-paid holidays
Wellness and personal advocacy programs
Family planning resources and leave programs
Tuition reimbursement
Competitive compensation and programs supporting employee well-being, families, and futures
New employees receive a detailed orientation to the firm's benefit offerings upon hire