Senior IP Docketing & Client Transition Specialist

Venable•New York, NY

3d•Remote

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 position is 100% remote and supports trademark and patent intake and transfer projects from onboarding instructions through completion, as well as outgoing file transfers and matter closings. The specialist audits trademark and patent files, electronic data, prosecution status, file histories, bibliographic and ownership information, correspondence, deadlines, and next actions. The role coordinates with legal teams, clients, prior and new counsel, foreign counsel, and firm departments to obtain information, resolve discrepancies, open matters, establish appropriate document structures, and complete onboarding or transfer requirements. It also provides flexible docketing support, maintains accurate docket data, produces reports, and leads data validation, audits, remediation, and quality-assurance initiatives. The position requires at least four years of trademark and patent docketing, prosecution support, and intake/transfer experience. A bachelor’s degree, technical training, or an equivalent combination of education and relevant experience is required. The role calls for strong knowledge of U.S. and foreign IP procedures, meticulous handling of deadline-sensitive information, project-management ability, and effective collaboration. Overtime may be needed. Work is mainly sedentary in an office or remote work environment.

Requirements

At least four years of trademark and patent docketing, prosecution support, and intake/transfer work, preferably in a law firm, with demonstrated 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, with 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 competing priorities independently.
Meticulous attention to detail, accurate data-entry skills, strong organizational abilities, and sound judgment with 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 support departments.
Strong proficiency with Microsoft Word and Excel; 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 with minimal direction, take ownership, demonstrate accountability and sound judgment, and recognize when consultation or escalation is appropriate.
Ability to work effectively under pressure, adapt to changing priorities, and provide flexible support across Trademark and Patent Docketing Teams.
Ability to work collaboratively as part of a high-functioning IP Operations Team.
Bachelor’s degree, technical training, or equivalent combination of education and relevant experience.

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 onboarding instructions through completion.
Maintain the intake/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; audit 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 and information needed for onboarding.
Establish conflicts and new matter opening requests and confirm appropriate IP document-management folders and matter structures are created.
Assist legal teams with preparation and filings upon request.
Serve as subject-matter expert for outgoing trademark and patent transfer projects and follow firm procedures for transferring electronic or physical files.
Audit matters being transferred out, including prosecution status, deadlines, docket information, matter data, and file completeness; coordinate resolution of discrepancies.
Coordinate with legal teams, clients, new counsel, billing, Records, Finance, and other departments to complete transfer and matter-closing requirements.
Prepare and transmit transfer correspondence, matter data, reports, and file materials; track acknowledgments and follow-up items.
Provide flexible docketing support to Trademark and Patent Docketing Teams based on workload and department needs.
Analyze client, attorney, foreign associate, and 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, 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/transfer data-remediation projects, determine project approaches, and exercise decision-making authority.
Identify workflow and data issues; recommend solutions; develop, document, test, and maintain procedures, including intake/transfer standard operating procedures.
Work independently and proactively while recognizing when consultation or escalation is appropriate.
Work overtime as needed and adapt to changing priorities and practice needs.