Minimum of four years of trademark and patent docketing experience, preferably in a law firm.
Completion of continuing education courses or trademark and patent training programs preferred.
Working knowledge of U.S. and foreign trademark and patent rules and procedures.
Proficient in using and maintaining an IP docketing system, preferably CPi.
Advanced auditing skills for trademark and patent file histories and deadlines.
Strong organizational abilities and meticulous attention to detail.
Proficiency in Microsoft Word and Excel, with familiarity in document management systems.
Responsibilities
Serve as the subject matter expert for trademark and patent intake projects.
Maintain and monitor the intake/transfer tracking system for project status.
Review and triage incoming trademark and patent files and electronic data.
Communicate with legal teams and clients to obtain necessary documents and information.
Establish conflicts and new matter opening requests, ensuring proper document management.
Assist legal teams with preparation and filings as needed.
Lead data validation and quality assurance initiatives for docketing.
Benefits
Flexible work environment with potential for remote work.
Opportunities for continuing education and professional development.
Collaborative team culture within the IP Operations Team.
Potential for overtime pay as needed.
Full Job Description
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 New York, NY:
$120,000 - $130,000 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.
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.
About Venable LLP
Venable LLP is a law firm that provides legal services to clients in a variety of industries, including healthcare, technology, and government. The firm was founded in 1900 and is headquartered in Washington, D.C. Venable LLP has offices in several other cities across the United States, as well as in London and Beijing. The firm's practice areas include corporate law, intellectual property, litigation, and regulatory affairs. Venable LLP has been recognized as one of the top law firms in the United States by several publications, including The American Lawyer and Chambers and Partners.
