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Patent Services

Patent Services

We provide back-end support to patent practitioners and can perform virtually any service that an in-house assistant, paralegal or docketing staff can provide—without the administrative burden and expense. Our procedures are designed to be flexible to accommodate your needs, and we support you throughout the entire patent prosecution process. We do not, however, perform any legal services.

Our staff is experienced and proficient in supporting law firms nationwide for both domestic (USPTO) and international (PCT) patent filings. The following is a sampling our services:

Domestic and international filings

  • Utility, design, plant, and provisional applications
  • Document preparation and processing associated with each filing, such as for an application data sheet (ADS), power of attorney (POA), information disclosure statement (IDS), assignment, and etc.

Applications are reviewed and appropriate documents are prepared and sent out for signature, and then filed electronically. An electronic acknowledgment is immediately forwarded to applicants upon receipt.

Continuation/divisional/CIP filings

Assignment changes and recordation

Petition filings

Office action response reporting and filings

  • Requests for continued examination (RCE)
  • Amendments
  • Notices of appeal
  • Appeal briefs
  • Terminal disclaimers

All actions received and filed on an applicant’s behalf will be reported to the client in a timely manner. We’ll send individual notifications on each action, and we’ll update the firm’s docketing system or database.

We also support practitioners in responding to Office actions, and provide all necessary documents to help streamline the response process, such as by providing response templates with a listing of rejections, cited references, claims, and amendment history made to each claim. In addition, our staff will search and gather all cited patent references and literatures from world-wide databases, such as USPTO, EPO, and JPO, which in turn saves attorney/agent time to focus on prosecution.

Reissue/re-examination application filings

PCT US national phase application filings

Patent term adjustments

Independent calculation of the USPTO’s patent term can be performed using a case’s file wrapper or data. The adjustment may be calculated at the time of allowance or after issuance of the patent.

Attorney/agent filing and fee payment reminders

We monitor all patent filing deadlines, such as priority dates, Office action response deadlines, and fee payment deadlines for filing fees, issuance fees, and maintenance fees.

Information disclosure statements

  • Review and monitor all incoming prosecution documents for prior art references and IDS requirements
  • Cross reference prior art records across all related and family cases
  • Retrieve and include all patent references bibliographic data and required patent and non-patent literature reference copies
  • Preparation and submission of completed IDS forms
  • Complete matter references reviews upon receipt of a Notice of Allowance

We track prior art references, and cross-cite to all related matters, such as including the cited references of a parent application to a continuation, divisional, or CIP application upon filing.

Docket management

  • Process and docket all incoming and outgoing actions from USPTO and foreign associates
  • Upload all files and images associated with actions
  • Maintain database with respect to case deadlines
  • Prepare and distribute docket reports at prearranged intervals
  • Perform periodic docket reconciliation and audits of PAIR correspondences to ensure accuracy
  • Reminder E-mails and phone calls as necessary

We keep track of all pre-filing, post-filing and post-grant dates and deadlines associated with your patent documents. We can do this either by working within your system or set one up on your behalf. Our staff is familiar with a broad range of patent docketing and management systems.

International patent proceeds

  • National stage filings in all countries – we will instruct and provide foreign associates with necessary documents to complete national stage filings timely and notify the applicant.
  • Requests for examination – our staff will review and process correspondences received from the foreign associates, and forward requests for examination advising of the appropriate deadlines and instructions.
  • Foreign filing deadline reminders – periodic reports will be provided to remind you of critical dates such as foreign filing and national stage filing deadlines.
  • Office action reporting – we will docket and review Office actions, report them out and provide instructions to the foreign associates, and prepare and provide response templates to the associate including pending claim sets and cited references.
  • Grant/validation docketing and reporting
  • Change of assignment/ownership issues
  • Petition filings

After filing an international patent application through the Patent Cooperation Treaty (PCT), our staff will coordinate with foreign counsels in each target country to complete the prosecution process for the respective country. We can use our network of foreign counsels with whom we have established professional relationships, or we can interface with your chosen foreign associate(s).

Preparation and filing of post-grant proceeds

We can also support the preparation and filing of patent documents after issuance of a granted patent, including inter-partes reviews, covered business method, ex parte re-examinations and post-grant reviews.

Administrative housekeeping

If needed, our staff can support administrative functions, such as with accounting, billing and invoicing, client communication, marketing, data entry, research support, and more.