Senior IP Docketing & Client Transition Specialist

Venable LLP•Chicago, IL

6d•$115,000 - $125,000

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 IP intake and transfer issues. The role oversees trademark and patent onboarding and outgoing transfer projects, audits portfolio and matter information, coordinates with legal teams, clients, counsel, and internal departments, and ensures required documentation, data, and deadlines are handled accurately. The position also provides flexible docketing support across Trademark and Patent Docketing Teams. It analyzes correspondence and docket information, maintains accurate deadlines and bibliographic data, supports docket processing and reporting, and leads data validation, remediation, docket audits, and quality assurance initiatives. The role may involve developing and maintaining procedures, including intake and transfer Standard Operating Procedures.

Requirements

At least four years of trademark and patent docketing, prosecution support, and intake or 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 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 multiple 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 work collaboratively 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 while recognizing 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.
Ability to demonstrate accountability, ownership of assignments, sound judgment, and a high level of internal and external client service.
Ability to work collaboratively as part of the IP Operations Team and provide flexible support across Trademark and Patent Docketing Teams.
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 subject-matter expert and point of contact for trademark and patent intake projects, from receiving 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 information, ownership and chain-of-title information, upcoming deadlines, and required 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 appropriate IP-specific 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 to clients or new counsel.
Audit matters being transferred out, including prosecution status, deadlines, docket information, matter data, and file completeness, and coordinate resolution of discrepancies before transfer.
Coordinate with legal teams, clients, new counsel, billing personnel, Records, Finance, and other firmwide departments to complete transfers 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 Trademark and Patent Docketing Teams according to workload, priorities, and department needs.
Analyze client, attorney, foreign associate, and foreign and domestic Trademark and Patent Office correspondence and update the docketing system with relevant data, deadlines, reminders, and bibliographic information.
Participate in processing and clearing critical and non-critical docket entries in accordance with established procedures, country law, client guidelines, and departmental policies.
Generate, review, and proofread 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 SOPs.