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FILING & PROSECUTION SERVICES

Filing & Prosecution Services

IP Docketing

Our dedicated docketing team supports corporates and law firms to manage their docketing in a professional and cost-effective manner. Our quality processes and team ensure there are no missed deadlines and timely reminders are sent for all open activities. We have experience working on various IP Management software’s.

Filing package preparation

Our expert paralegals have deep domain knowledge and prepare application forms and ensure application is not rejected due to absence of forms or missing information. Timely and correct form preparation ensures there is no additional cost and there is no additional time added to the prosecution process.

IDS Management

Our experienced IDS team supports IP teams of corporates and law firms manage the IDS preparation and reference management. We have a Semi-automated process where we prepare a citation matrix for all the family members to ensure no references are missed

Shell office action response

This templated response serves as a foundation, requiring only specific technical details to be filled in by the managing attorney for the case. Our paralegals prepare the base document with header, footers, as per attorney specific styles and marking the objections raised by the examiner so that the attorney can only focus on the technical aspect of the response.

Data Verification

Over the time due to various reasons, the data within the IP Management software is compromised and is inaccurate. We verify the data against the data available with various Patent and Trademark organisations and update the IPMS to reflect correct and accurate data.

Special Projects

We undertake various ad hoc and one-time projects to assist IP teams focus on regular and day to day activities. Projects such as: File opening, data migration, reference entry, backlog clearance, holiday period coverage, etc.

Post allowance review

After the issue notification is received and before paying the issue fees, our team performs a thorough review of the file wrapper to ensure there are no discrepancies and all the bibliographical data is correct along with other formal documents.

Trademark Portfolio Management

Regular update on the status of various trademark applications and marks is critical for IP teams. Our team provides periodical reports which lists down all the trademarks along with their details and current status. This provides insights to the attorneys to strategically plan and keep the stakeholders informed.

FAQ's

Docketing

1. Do you manage docketing for both patents and trademarks?
Yes, we manage both patents & trademarks docketing for corporates and law firms.
2. What docketing platforms do you docket?
Our team dockets in various IP management software’s, such as Foundation IP, Anaqua, DIAMS, Memotech, Cpi, etc. Our team requires 1 week to get accustomed to any docketing software.
3. We need help during the holiday season, do you provide temporary assistance?
Yes, we have various billing models and contractual, fixed time, backlog clearance are some of them along with FTE, etc.
4. What all jurisdictions you provide docketing for?
Our team is well trained for US, PCT and all international docketing for patents and trademarks.
5. Can your team provide assistance with data migration to IP management system?
Yes, we give complete assistance in setting up client’s data for docketing in IP docketing software.

Filing Package Preparation

1. What all forms do you prepare?
Our team prepares all the filing documents required for filing an application such as ADS, specifications, assignment & recordation, oath & declaration, etc.
2. Does your team file at the USPTO as well?
Yes, our team can file on behalf of the attorney at the USPTO, PCT & EPO.
3. How much time does your team require to prepare and file? Our standard turn around time for this service is 3-4 business days, however if there is an urgent requirement we can prepare the forms and file on the same day.
4. What all data security and confidentiality measure you have in place?
Before starting any arrangement, we sign an NDA with all our clients in their format. We have signed NDA with all our staff members and limited access to drives on need basis only.

IDS

1. When all does your team prepare an IDS?
We prepare IDS on our client’s requests at the time of filing, before the office action and supplemental IDS anytime during the prosecution.
2. How quickly can you team prepare an IDS?
Our standard Turn around time is 4 business days and we can take rush requests as well.
3. Do we need to provide your team with the reference documents?
Our team can search for references available publicly and can also procure paid references as per our client’s requirements and authorization.
4. Do you use a tool to prepare and file an IDS?
We have a home grown excel tool – Citation matrix, we use it to map all the family members and associated references. We use third party tools to manage IDS and reference management for our clients, access to which is provided by our client’s.We have a technical team as well, which can assist in preparing draft applications and response to office actions.

Shell office action response

1. Do you prepare the complete response to office action?
This is only a shell response to the entire office action. We fill all the information, highlight the objections and leave the technical part blank for the attorney to input their response.
2. What additional services you provide at this stage?
We amend the drawings, provide replacement drawings and provide the clean set of claims.
3. Do you provide copies of references?
Yes, we will download all the references cited by the examiner in their rejection and procure paid references as per instructions and authorization of the examiner.

Data Verification

1. What is covered under data verification?
We cross check all the IP data currently in the IPMS against what is available at the PTO’s. We highlight the discrepancy and update the IPMS accordingly.
2. Do you do data verification only for patents?
We do data verification for both patents and trademarks.
3. How is the data verified for jurisdictions which are no online?
We reach out to our agent network for those cases and we are happy to use your agents as well if you already have an established relationship.
4. How is the pricing determined?
Pricing is based on fixed pricing model, per case basis.
5. What all data is verified?
We verify all the bibliographic information, personnel, inventors, upcoming docketing and renewal due date.

Special Projects

1. What is a special project?
Various projects which do not form the part of a paralegal or admin staffs daily work are categorized as a special project such as, data migration, reference entry, file history download, file opening, etc.
2. How is the billing done for this type of work?
We do a detailed effort estimation for the project and can bill on an hourly or a fixed cost for the project.
3. Who will work on the project?
Our experienced paralegals and legal admin staff will work on the projects based on their skill set and previous experience working on similar projects.

Post Allowance Review

1. When is this service performed?
We perform post allowance review before the issue fee is paid. This covers an overall check of the entire prosecution, checking all the bibliographic information, inventor & attorney details, etc.
2. Do you provide drawings or illustrations services at this stage?
We have team which can prepare and amend drawings at any stage of prosecution.
3. Can we customize the service and reports?
Yes, our services are all customizable and we can customize all reports as per our clients requirements.

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