Our team of relevant experts help our clients in managing their patent portfolio. Our experienced professionals understand the technical and legal aspects of the patents which is required for the respective services. We offer industry best practices blended with our client’s preferences.
Patent docketing is a service for managing all the communication and important deadlines related to patent application process. Deadlines are very crucial for managing intellectual assets. Outsourcing of docketing services can lead to improved quality and minimize the cost involved in hiring docketing professionals. With a robust approach and defined methodologies, we assist you in updating and maintaining all IP records with various IP Management Software (IPMS). Docketing services involve managing applications as per the timelines prescribed by the different patent offices. This service has immense value when there are large numbers of IP cases to be monitored and updated. We help in maintaining and updating all the important correspondences from the patent offices at different stages i.e. pre-filing, post-filing and post-grant stages. With our docketing specialists, we docket all PTO actions and deadlines associated with your IP assets. Also, if you are planning to move to a new IPMS, we have experienced resources to handle the migration from your previous IPMS with the new one. As a part of service, we perform the following tasks and empower you to focus on strategic issues:
Upload and docket all the incoming actions or communications received from different Patent offices and legal associates
Upload all associated images with patent applications
Maintain IPMS with respect to deadlines
Prepare docket reports
Reminder emails/calls as required
As per the US Patent Law, it is the duty of a patent applicant to disclose all known prior art references (patents as well as non-patent literature) that would be pertinent to determining the patentability of an application. As a matter of practice, this duty is performed by way of filing of an Information Disclosure Statement (also called as IDS). An IDS refers to the submission of relevant background art or information to the United States Patent and Trademark Office (USPTO) by an Applicant during the patent prosecution process. Pertinently, non-submission of an IDS might render an issued patent as invalid and non-enforceable. The duty to disclose is continual and obligates the disclosure of prior art at the time of filing an application or during the prosecution of the patent application. There are multiple sources for such prior art such as a search report on a patent family, references cited by the examiner in an office action of a family member, etc. It becomes cumbersome and expensive task for an inventor/applicant to track such prior art over a period of time. We assist you in complying with the obligation by timely and accurately locating prior art references in a cost-effective manner. We prepare easy to follow citation matrices and audit reports that enable you to track all family members and references from all possible sources. We prepare ready to file IDS forms as per the latest format prescribed by the PTO.
As part of our cost-effective service for US patent filers, we:
Hit all publicly available PTO websites to locate prior arts in all the patent families related to an application
Validate Family Linkages based on INPADOC (EP Database) and Global Dossier
Cross-check all the references which were identified with previously submitted arts to identify new and uncited prior art/references
Prepare the IDS SB08 forms and cover letter along with RCE or QPIDS form, if required
Download the legible copies and format the PDF of the required references as per the USPTO guidelines to make submission easier
Reduce supplemental IDS filing and RCE costs by special prioritization method
Reduce operational costs by leveraging automation
Patent proofreading involves scrutiny of errors in published patent applications and granted patents. Significant published applications or granted patents have errors which occurred during the drafting or prosecution stage. These errors may limit the scope of the patent or lead to its revocation post-grant. It is crucial to proofread patent applications to identify discrepancies in patents such as missing antecedent references, the inconsistent numbering of claims, incorrect names of inventors, attorneys or assignees, spelling mistakes or any preliminary amendments during the prosecution stage. Errors, especially with the priority information, might lead to serious consequences which may even result in abandonment of a patent.
The service involves technical and legal understanding of the patent application. Our team of experienced proof-readers performs detailed scrutiny of the prosecution history of the patent document to locate errors that are made either by the applicant or patent office. We also prepare ready to file form to submit with USPTO for the issuance of a Certificate of Correction resulting in saving your time and cost.
As a service provider, we follow the industry-renowned best practices which include:
Ensuring that Examiner amendments are reviewed
Identification of PTO errors introduced by the transliteration of the IFW version of patent claims/description
Identification of applicant errors, particularly those that are (unintentionally) introduced while complying with office actions
Identifying and fixing antecedent basis errors in claims Including "suggestions" for remedying/correcting errors wherever applicable
Flagging with the explanation of potential error on the identification of an issue that is not a clear error
Identifying if the Continuity and bibliographic information of the patent has errors or inconsistencies
Providing an EFS-ready form to the client based on USPTO guidelines for the issuance of a Certificate of Correction(CoC)
Data verification is very important to quickly assess and verify the IP information especially in IP acquisitions, divestitures or software migrations. It is a time-consuming process and requires significant resources to ensure that your IP information remains accurate, up-to-date and consistent with the official registers.
We offer you a solution that enables you to handle the validation project and enables you to focus on innovation rather than administration.
Reliability: Multiple levels of data verification, including USPTO, EPO, Global Dossier and online data sources
Automation: Data could be uploaded into an IP management system which eliminates the possibility of manual entry and errors
Customization: Data verification could be handled either as a stand-alone project or as part of the normal patent maintenance process as per client requirements
As we all know that applications do not have any expiry date listed on the granted patent letters. Since some applications take priority and Terminal disclaimer relationship with any family patent application, the expiry date may change and fall before the second or third maintenance fee period. To avoid any excess payment to PTO, checking of the expiry date is important. This service might save huge cost for you and your clients.
To maintain the patent’s validity for its term, timely payment of the maintenance fee is mandatory. Our experience annuity team keep a check of all the payment deadlines across all the jurisdictions and keep you aware of any upcoming due date for annuity payment. This eliminates any risk of non-payment of the maintenance fee and keep your patent live until the expiry date, allowing you to have maximum royalty.
Patent Term Adjustment (PTA) is a process carried out by the United States Patent and Trademark Office (USPTO) for adding days to the normal patent term (twenty-year from the earliest priority date of a patent application) corresponding to the delays that occur in prosecution by the USPTO.
It is a critical calculation that determines whether the patent has the longest possible term. The process is laborious and time-consuming as it involves a detailed study of the history of the patent and reviewing all important dates.
We assist attorneys and law firm’s clients to increase revenues by adding days, weeks or even months to the term of the patent. We review all the events in prosecution to determine the correct PTA. We also provide a report with details of our calculation and comparison with the PTO's calculation.
Patent Term Adjustment (PTA) is calculated based on examiner & applicant delays during the prosecution of the patent application.
PTA = X delay + Y delay + Z delay - Overlapping delays - Applicant Delay
X delay = PTO delays in responding
Y delay = Pendency after 3 years
Z delay = Delay due to interference, appeal & secrecy orders
Overlapping delays = Any overlap between X, Y & Z delays
Applicant delay = Delay due to failure of the applicant to engage in reasonable efforts to conclude the examination