Paralegal
Paralegal Support
With fluctuating caseloads and tight deadlines, getting the right paralegal support is crucial. We work as an extension of your in-house team to cater to any or all the tasks assigned to a paralegal. Our experienced team is knowledgeable on the US and international IP prosecution and can learn your in-house practices with minimum lead time.
IDS & Reference Management
The USPTO mandates the submission of an IDS to confirm the patentability of an application at the time of patent filing.
Preparing an IDS is a complex process that requires tracking of prior art references cited across all family members from all possible sources. The complete IDS process can be a drain on the internal IP teams where managing large families is concerned. Researchwire handles this complex procedure of IDS management efficiently. Our team will act as an extension of yours and continually improve the process to achieve better results. We offer flexible turnaround times based on the number of references and the family size.
Additional Services:
- We also prepare the IN FORM 3
Indian Patents Act 1970 mandates filing of Form-3 under Section 8 for a Patent Application.
- Provide details of prior art cited by other Patent Offices on corresponding applications
The non-US countries may require detailed disclosure of corresponding applications during their prosecution phase – at the time of examination or at the time of claiming priority.
- Israel Section 18
Application Filing Package
Time is of the essence when filing a patent application to claim an invention successfully. After considering whether the inventor needs domestic/international protection and provisional/non-provisional filing, they must prepare the complete application package for submission to the PTO.
Our paralegal experts help you prepare the entire application package and handle all the critical administrative tasks thereof. We prepare the application as per its continuity status – First filed/Continuation/CIP/Divisional/National Phase entry. The experts carefully proofread and format the IDS and all other required forms of the draft application.
Shell Office Action Response
Our paralegals prepare shell response to the non-final and final office actions received by the examiner. The shell office action is prepared as per an attorney’s preferred format.
We can support attorneys in creating response templates for easy use and to enable focus on the technical aspect of the response. We also assist with pending formalities, required drawing corrections, and coordinating with partners in other jurisdictions to review and submit the office actions.
Value Add:
- Preparation of Terminal Disclaimer
Post Allowance Review
Once the notice of allowance is issued by the examiner, examination of the application stops, and this is the last opportunity for the applicant to make any last-minute changes to the application before the issue fee can be paid within 3 months from the date of issue of NOA. This deadline is non-extendable.
We help you perform a post-allowance review and unveil any disparities/omissions that may have occurred during the prosecution. Our experts holistically assess the patent file wrapper and highlight any discrepancies in the formal documents, signatures, priority data, and so on. A comprehensive review report is shared with the client along with a copy of a clean claim set.
Value Additions:
- Citation Matrix
- Clean Copy for Allowed Claim Set
patent proofreading
Internal legal/IP teams of corporates and law firms find proofreading of granted patents to be an extremely time-consuming and tedious affair. It involves a thorough reading and understanding of the patent application/issued patent and requires expertise to figure out errors included therein.
Our Proofreading service helps in identifying errors on the face page, claims, and the entire patent. Some of the errors identified are critical which could undermine the entire validity of the claims. We also review patents for grammatical errors, data consistency, and structure, to bring proper meaning between what is intended to claim and what is claimed.
Value Adds:
- Proofread draft patent application
- Preparation of Certificate of Correction
Patent Term Adjustment
Delays by the patent office can considerably decrease the enforceable term of a patent. Patent Term Adjustment (PTA) allows applicants to seek alteration to the term of a patent for any delays caused by the USPTO during the prosecution stage. USC 154 provides three categories of delay A, B, and C type for the calculation of PTA.
We offer PTA services based on an analysis of office actions, restriction requirements, and notice of allowance documents to identify the source of delay and precisely calculate the final PTA. Our paralegal experts prepare an extensive report based on such insights to seek modifications to the patent term.
We also calculate the exact expiry date for the patent using the PTA approach and use a semi-automated process to confirm the existing expiration date in the records. In the event of inconsistency in the date, the same is reported to our clients for judicious action.
Report-out Letters
Report-out letters are drafted on behalf of the attorney to apprise the applicant about the incoming notice/official action from the PTO. An incoming notification contains current application status, next due date for responses and summary of actions required.
Our team prepares report-out letters in prescribed formats after careful assessment of the incoming notification highlighting important actions, due dates, and other official requirements.
Our experts pay close attention to the language and format of the letter to ensure accuracy and adhere to a one-day turnaround time.
