Any Intellectual Property prosecution process involves complying of country specific IP laws.
These require expert supervision while creating. An Intellectual Property paralegal must have
the thorough knowledge of country laws and should be able to perform task or provide
assistance to their attorney on time and accurately. Having paralegal benefits in achieving
negligible service cost and to gain client centric approach.
Our trained paralegals at contrivingIP have complete knowledge in major country patent,
trademark and design prosecution. They are well versed in preparation and drafting of all legal
documents, applications as per PTO requirements and send for their attorney’s approval. They
keep track of all the documents and prosecution of their various clients’ and keep them ready to
available as and when required. Paralegal ensures timely communication with the foreign
agents and upon receipt of clients’ or attorney’s approval provide foreign agents to proceed and
take necessary action.
Under paralegal we provide range of services. Some of them are:
Filing form preparation:
This includes the preparation of various forms required to be
submitted at the PTO during the life span of the patent application. Some of the filing
forms are Oath, Assignment, POA, ADS and Transmittal forms.
Our team provides assistance in preparation and filing of different
types of patent, design and trademark applications at USPTO. We can also provide
assistance in PCT application preparation and filing viePCT and at USPTO, HK patent
application preparation, EP patent prosecution assistance using EPO smartcard.
Trademark Application Preparation & Filing Support:
We prepare US TM applications
based on the search result and file the application at USPTO via TSDR. Once filing is done
then we enter the filing details into docketing software and manage the deadline.
Trademark Paralegal Support:
We also provide assistance in trademark response
preparation where we draft arguments of rejections, modify the description of goods
and file the response. We also have expertise in SOU, renewal payment and other similar
services in TM prosecution.
IDS Audit and form preparation:
Our IDS team conducts family audit by cross citation of
references within the family and prepare IDS form. We also provide supporting
documents available free for foreign references and NPLs.
Office Action hell Response:
Under this activity, we take attorney specific response
template (non-final and final) and analyses the objections, rejections examiner has
pointed out under different sections such as 101, 103, 112, 102, Terminal Disclaimer etc.
Based on the rejections or objections we prepare ready to file response template for
attorney with clean copy of claim and claim identifier and provide to attorney for their
legal or technical input. This saves attorney time and client’s money
Once patent is granted then to ensure that all the amendments
and other bibliographic details have been incorporated. Our proofreading team
identifies the errors made by both “the applicant and the PTO” and prepares ready to
file “Certificate of Correction (CoC)”. In proofreading we mainly check:
Drawings filed in compliance with PTO requirements, reference numerals
All sections of the specification are clearly defined and explained
Claims. Dependent and independent claims, antecedent of claims etc.
Our experts can perform proofreading for the below cases:
Published Application Proofreading
Granted US Patent proofreading
Patent Term Adjustment:
To determine if the Patent Term Adjustment published by the
USPTO was calculated correctly, our semi-automated process to calculate a patent’s
expiration date uses, among others, the following data points: continuity, terminal
disclaimer, maintenance fee, and office action response extensions.