Senior IP Docketing & Client Transition Specialist

Venable LLP•Washington, DC
•$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 manages trademark and patent onboarding and outgoing transfers, audits matter files and data, coordinates with clients, counsel, legal teams, and firm departments, and provides flexible docketing support across the Trademark and Patent Docketing Teams. It also leads data validation, docket audits, remediation, and quality assurance initiatives. The position requires at least four years of trademark and patent docketing, prosecution support, and intake/transfer experience, as well as working knowledge of U.S. and foreign IP rules and procedures. The role involves complex, high-volume project management, meticulous handling of deadline-sensitive information, and the ability to work independently and collaboratively. Work is mainly sedentary in an office or remote work environment, as applicable; overtime may be needed.

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, 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 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 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.
  • Demonstrated accountability, ownership of assignments, sound judgment, and a high level of internal and external client service.
  • Ability to collaborate as part of a high-functioning 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 point of contact and subject-matter expert 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, auditing prosecution status, file histories, bibliographic and ownership information, deadlines, and next actions.
  • Coordinate with legal teams, clients, prior and foreign counsel, and firmwide support departments to obtain documents, correspondence, data, assignment information, and other onboarding requirements.
  • 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 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, file completeness, and discrepancies; coordinate resolution 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, priorities, and department needs.
  • Analyze client, attorney, foreign associate, and Trademark and Patent Office correspondence and 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, determine project approaches, and exercise decision-making authority.
  • Identify workflow and data issues, recommend solutions, and develop, document, test, and maintain procedures, including intake and transfer SOPs.

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
  • Robust benefits and programs supporting employee well-being, families, and futures
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