Job Description

You’re looking for a change, and so are we. At Venable, we know that every new hire brings valuable experience, new perspectives, and a chance to raise the bar on our approach to how we work. That’s why we’re looking for a Senior IP Docketing & Client Transition Specialist to serve as the IP Division’s subject-matter expert for complex IP portfolio intakes and transfers and provides authoritative technical guidance on intellectual property intake and transfer issues.

The ideal candidate will be responsible for…

• Serving as 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
• Maintaining intake/transfer tracking system and actively monitoring project status, outstanding items, next actions, and follow-up requirements
• Reviewing and triaging incoming trademark and patent files and electronic data; auditing prosecution status, file histories, bibliographic information, ownership/chain-of-title information, upcoming deadlines, and next actions due
• Communicating effectively with legal teams, clients, prior counsel, foreign counsel, and firmwide support departments to obtain missing documents, official correspondence, data, assignment information, and other information required to complete onboarding
• Establishing conflicts and new matter opening requests and confirming appropriate IP-specific document management folders and matter structures are created
• Assisting legal teams upon request with preparation and filings
• Serving as subject matter expert for outgoing trademark and patent transfer projects and following firm procedures for transferring electronic and/or physical files to clients or new counsel
• Auditing matters being transferred out, including prosecution status, upcoming deadlines, docket information, matter data, file completeness, and coordinate resolution of discrepancies before transfer
• Communicating effectively with legal teams, clients, new counsel, billing personnel, Records, Finance, and other firmwide departments to complete transfer and matter-closing requirements
• Preparing and transmitting transfer correspondence, matter data, reports, and file materials to new counsel or the client, and track acknowledgments and outstanding follow-up items
• Providing flexible docketing support to both Trademark and Patent Docketing Teams based on workload, priorities, and department needs
• Analyzing client, attorney, foreign associate, foreign and domestic Trademark and Patent Office correspondence and accurately update the docketing system with pertinent data, deadlines, reminders, and bibliographic information
• Participating in processing and clearing critical and non-critical docket entries in accordance with established procedures, country law, client guidelines, and departmental policies
• Generating, reviewing, and proofing routine and special docket, status, transition, discrepancy, quality assurance, and client reports assigned
• Leading data validation, docket audits, remediation projects, and ongoing docket hygiene and quality assurance initiatives

The successful candidate will demonstrate…

• A minimum of four years of trademark and patent docketing, prosecution support, and intake/transfer work, preferably in a law firm environment, with demonstrated knowledge and experience of both trademark and patent docketing
• Completion of continuing education courses or trademark and patent training programs preferred
• 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; CPi or comparable system experience preferred
• 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 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
• Strong proficiency with Microsoft Word and Excel and familiarity with document management systems and electronic file environments
• Project management experience or training preferred
• Flexibility to work overtime as needed

Pay Range for Candidates in Washington, DC:

$115,000 - $125,000 per year

The range provided is the minimum and maximum salary that Venable in good faith believes at the time of this posting that it is willing to pay for the advertised position. Exact compensation will be determined based on individual candidate qualifications and location. Overtime wages earned will be paid in compliance with applicable law.

Committing your time and talent is no small matter—at Venable, we know that superior client service begins with an investment in our people. Our competitive compensation, robust benefits, and programs that support our employees’ well-being, families, and futures reflect our dedication to prioritizing the whole person, not just the professional.

Venable’s benefits package includes medical, dental, vision, disability, 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, and more. New employees are provided a detailed orientation to the firm’s benefit offerings upon hire.

Here, we strive to offer the kind of care that radiates, from our colleagues to our clients, to our communities, so that success finds everyone.

Qualifications

Education Requirements

• Bachelor's degree, technical training, or equivalent combination of education and relevant experience.
• Completion of continuing education courses or trademark and patent training programs preferred.

Skills & Technical Requirements

• Minimum of four (4) years of trademark and patent docketing, prosecution support, and intake/transfer work, preferably in a law firm environment, with demonstrated knowledge and experience of 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; CPi or comparable system experience preferred.
• 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 manage complex, high-volume projects and multiple competing priorities independently, including leading large and/or complex trademark and patent portfolio intake/transfer data-remediation projects, determining the project approach, and exercising decision-making authority.
• 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 the ability to work collaboratively with attorneys, business professionals, clients, foreign associates, prior/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 owns developing, documenting, testing, and maintaining procedures, including drafting intake/transfer Standard Operating Procedures (SOPs).
• Ability to work independently and proactively with minimal direction while recognizing when consultation or escalation is appropriate.
• Project management experience or training preferred.

Other Requirements

• Flexibility to work overtime as needed.
• Ability to work effectively under pressure and adapt to changing priorities and practice needs.
• Consistently demonstrate 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.

Physical Requirements

• Work is mainly sedentary in an office or remote work environment, as applicable.