Senior IP Docketing & Client Transition Specialist

Venable•Chicago, IL

4d•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 IP intake and transfer issues. The position is fully remote and provides support across trademark and patent intake, transfer, and docketing work. The specialist manages intake and transfer projects from onboarding instructions through completion, reviews and audits files and electronic data, monitors project status and deadlines, coordinates with clients, counsel, and firm departments, and helps ensure matters are opened, transferred, or closed accurately. The role also provides flexible docketing support, conducts data validation and audits, and contributes to remediation and quality-assurance initiatives.

Requirements

At least four years of trademark and patent docketing, prosecution support, and intake/transfer work, preferably in a law firm, with 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, including 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 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.
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.
Flexibility to work overtime as needed.
Bachelor’s degree, technical training, or an 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 point of contact and subject-matter expert for trademark and patent intake projects, from receipt of onboarding instructions through completion.
Maintain intake and transfer tracking systems 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 information, ownership and chain-of-title 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 materials.
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; coordinate resolution of discrepancies.
Coordinate transfer and matter-closing requirements with legal teams, clients, new counsel, billing personnel, Records, Finance, and other departments.
Prepare and transmit transfer correspondence, matter data, reports, and file materials to new counsel or clients; track acknowledgments and 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 Trademark and Patent Office correspondence; update the docketing system with pertinent 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 solutions; and develop, document, test, and maintain procedures, including intake and transfer Standard Operating Procedures.
Work independently and proactively, recognizing when consultation or escalation is appropriate; adapt to changing priorities and provide collaborative support across the IP Operations and 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
Additional competitive benefits and programs supporting employee well-being, families, and futures