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Paralegal Services

The world of IP services is rapidly changing. Managing patent portfolios takes a lot of time and effort, and it necessitates current and in-depth understanding of legal and administrative requirements.

Staff management and review, as well as the necessary knowledge, are both expensive and complicated. Despite this, the constant push to cut costs clashes with the resources required to handle IP efficiently and properly.

By leveraging deep domain knowledge, highly experienced employees, and cutting-edge technological solutions, MCRPL may be able to help standardise processes to improve efficiency or take over the entire administrative process of filing and prosecution, freeing up your internal IP team to focus on strategic IP work.

 

Our Services

Patent and Trademark docketing

Team with expertise at all leading tools used for docketing to maintain the client docketing system

India patent, Trademark filing and prosecution support

We prepare patent filing packages that help our customers align their filing to achieve their quality

US prosecution support and post allowance review

Patent and Trademark renewal management across the Globe

PTA/PTE for US patents

We provide a detailed report comparing our timeline to the USPTO’s official calculation

IDS Management

Timely and accurate tracking of prior art references cited across all the family members at minimal costs

Recordation

Reliable and easy procedure to undertake IP recordals with the utmost diligence

Proofreading

Performed by our skilled paralegals and overseen by our in-house attorneys

Data verification

Our paralegal team assists these clients with their data verification requirements

Patent and Trademark docketing

Team with expertise at all leading tools used for docketing to maintain the client docketing system

MCRPL’s expert paralegal support services, flawlessly manage your patent docketing process throughout the prosecution cycle, thereby ensuring that not a single deadline is missed. We have effective patent portfolio management tools and teams to help maintain and take necessary actions to meet deadlines pertaining to a patent application.

Process

Our extensive experience, tech-enabled processes, and commitment to quality ensure prompt and accurate review and docketing of all internal and external communication from PTOs, outside counsel, foreign associates and clients at all sages of the prosecution

Quality

4-eye review is done by the senior reviewer to check the cases processed by analysts are accurately done

TAT

Maintain 24-hour turnaround for routine docketing tasks

Report

Periodic reports and deadline reminders

Our Differentiator

Features

  • All communication (emails, PTO actions and correspondence) are docketed in your IP management system;
  • Download and auto-docket PTO Office actions, Upload all images associated with corresponding actions
  • Maintain database with respect to deadlines, Generate docket reports, send reminders
  • 24-hour turnaround for routine docketing tasks
  • Matters that are subject to export control handled appropriately
  • Measurable service level agreements and reporting

Our Docketing Team

  • Highly trained paralegals with continuous training and assessment
  • Experienced in handling large and small portfolios
  • Onshore/offshore/hybrid docketing models ensure significant savings and technology export adherence
  • Ability to scale effortlessly as needed
  • Team well versed with the rules and procedures of international patent prosecution
  • Receives ongoing refresher training and periodic updates on all global law changes
  • Highly experienced with multiple commercially available docketing systems
  • Skilled professionals hired from leading in-house IP team (top pharma company, glass company IP team)

Benefits

  • Minimal supervision required from your staff
  • Reduced fixed costs associated with staffing
  • Responsive, expert help when needed; assistance available during peak docketing times
  • Maintain highly efficient, documented docketing processes that lead to decreased costs database with respect to deadlines
  • Customizable docketing procedures, ready to fit any client need
  • Managing sudden surge in the workload and clearing backlogs
  • System agnostic delivery model

Docketing Expertise

At MCRPL, we have a team of paralegals who is specialized in providing docketing services to various clients worldwide. The team has expertise at all leading tools used for docketing such as Patricia, Memotech, Anaqua, PATTSY, Symphony, etc. 

India patent filing and prosecution support

We prepare patent filing packages that help our customers align their filing to achieve their quality.

Our team, which includes Patent Agents and Patent Attorneys, are authorized to file patent applications before the Indian Patent Office (IPO) and has extensive experience in filing and prosecuting patent applications in India. As part of these patent prosecutions, we have responded to several examination reports issued by the Indian Patent Office. Our experience has also helped us in thoroughly understanding the Patent Act and the nuances involved in prosecuting patent applications in India.

Our team also has expertise to prepare filing packages for USPTO, EPO, WIPO and support filing.

India filing and prosecution support

Types of application filing packages we prepare and file

Provisional

Complete

Continuation

Divisional

National Phase

Trademark Registration In India

We undertake a thorough search of the TM directory at MCPRL, prepare an authorization letter so that we can submit for trademark registration on` your behalf.

Our specialists will assist you in determining the classes you should enroll in.

We fill out forms and submit them to the Registrar, and we keep you updated throughout the registration procedure.

Throughout the procedure, you will receive the greatest possible assistance and have all of your questions answered.

US prosecution support and post allowance review

Form Preparation: USPTO

MCRPL supports clients in preparing filing packages and filing of forms:

Application Data Sheet - PTO/AIA/14

Transmittal Letter - PTO/AIA/15

Fee Transmittal - PTO/SB/17

Oath & Declaration - PTO/AIA/01(06-12)

An IDS form PTO/SB/08 (Form 1449)

Power of Attorney

Assignment (37 CFR 3.73) and Assignment Cover Sheet

USPTO Notice of Allowance / Issue Fee Review

  • At times, the Image File Wrapper (IFW) record of the patent application may contain errors that might impact the enforceability of the patent.
  • Such errors may include errors in bibliographic details, review of cited art, checking for double patenting against other family applications, ensuring correctness of the claims including amendments following from previous office actions, etc.
  • Correcting these at the NOA stage would be greatly advantageous, as that would obviate the need for filing a separate Certificate of Correction or other action with separate filing fee to correct these.

Our Methodology

PTA/PTE for US patents

We provide a detailed report comparing our timeline to the USPTO’s official calculation

MCRPL’s Patent Term Adjustment (PTA) service enables you to easily estimate and extend the term of a US patent by accommodating for the delays caused by the US patent office (USPTO) during the prosecution of a US patent application.

Patent term adjustment (PTA) is a process carried out by the United States Patent and Trademark Office (USPTO) that awards day-for-day credits to the normal twenty year term from filing of a patent application based on delays in prosecution at the USPTO

Importance of Patent Term Calculations

The term of a patent is important in that it provides the specified period for infringement. In general, for the term of a patent, whoever without authority makes, uses, offers to sell or sells the patented invention, within the United States, or imports into the United States any patented invention during the term is an infringer of the patent and may be subject to monetary damages, injunction and other forms of legal relief

How to Calculate?

Delays

A delay = PTO delays in responding
B delay = Pendency after 3 years
C delay = Delay due to interference, appeal, secrecy orders

Overlapping delays

Any overlap between A, B, or C delays

Applicant delay

Applicant’s failure to engage in reasonable efforts to conclude examination

PTA

A delay + B delay + C delay – Overlapping delays – Applicant Delay

IDS Management

Timely and accurate tracking of prior art references cited across all the family members at minimal costs

While prosecuting patent applications in the US, it is the duty of the inventor, applicant, or attorney representing the applicant to notify all the known prior art references that are known up to the date of patent issuance, before the United States Patent and Trademark Office (USPTO) in a specified format, known as the Information Disclosure Statement (IDS). The said prior-art references include patents and non-patent references that are material to patentability of the claimed through the respective application.

At MCRPL, we prepare accurate and easy to follow citation matrix allowing easy tracking of all family members and references cited across all the family members from all possible sources. We also prepare ready to file IDS which complies with the format prescribed by the USPTO, saving your precious time.

How To Do ?

Group all the applications from the family (US and non-US)

 

 

 

There are multiple sources for such prior art, such as – a search report on a patent family member (e.g. International Search Report by WIPO); references cited by Examiner in an Office Action of a family member, etc.

Members of the family include published patent applications, US patents, and foreign references, as well as other documents

 

Track for OA for the family applications to extract the cited references

Recordation

Reliable and easy procedure to undertake IP recordals with the utmost diligence.

During examination of a pending patent application or after the patent is granted, the owner of the patent may change: 1) the original owner may transfer ownership to another entity or party, through an “assignment;” or 2) the original owner may retain ownership but change its name. The original owner should record the assignment or name change with the USPTO’s Assignment Recordation Branch by filing a Recordation Cover Sheet along with a copy of the actual assignment or proof of name change.

Rights are not enforceable by assignee without a recorded assignment. Recordation of an assignment provides a presumption of validity of the assignment

Assignment Document

Verify the agreement/deed signed by both conveying and receiving parties

US Asserts/ Non US asserts

Separate the patent/ application number accordingly

Grouping

Group all the patents by family for the assignments to be recorded and verify the chain of title

Recordation

File the recordation in EPAS Once the recordation is done, Patent Assignment Coversheet is generated from EPAS

Confirm Receipt

Confirm Notice of Recordation to client

Proofreading

Performed by our skilled paralegals and overseen by our in-house attorneys.

At MCRPL, our experienced paralegals carefully proofread every page of the patent, to identify all the errors and omissions, including claims, specification, grammatical errors, and document formatting as per PTO standard.

When necessary, request forms for Certificates of Correction are generate and files on behalf of the applicant.

  • Patent proofreading is a process which ensures identification & rectification of errors as well as accuracy of the patents which affect the enforceability of patents
  • This process must be used as an indispensable step either before grant of patent via a pre-issuance review or post grant of a patent.

Patent Proofreading Parameters

Basics

Advanced

Deliverables

Data verification

It is prudent to validate data for patents being acquired whenever there is a transfer of patent assets through a merger, acquisition, or patent sale, for example, examining the ownership details and ownership history, the maintenance fees paid, patent family details, bibliographic details, and so on. Additionally, the patent ownership must be changed, which necessitates the preparation of required forms to be filed with PTOs. This is a time-consuming activity that, when faced with tight constraints, becomes unmanageable for organisations and law firms with a small number of paralegals juggling several tasks.

Our paralegal team assists these clients with their data verification requirements. The crew is well-versed in the various needs of many jurisdictions and is capable of delivering high-quality products under tight deadlines. The team is well-versed in regional regulations and can assist with Assignment and IP recordal help in a number of jurisdictions across the world.

Quality Control

Case details

Get all of the information we need from the client about the project we are working on

The process

Continue the process as agreed upon with the client

Quality Check

The account manager performs an sample/random audit of forms prepared

Account Manager audit

All the projects done are reviewed by the dedicated quality reviewer. 100% quality check is performed

  • Automating repetitive tasks to to avoid manual errors.
  • 4-eye review is done by the senior reviewer to check the cases processed by analysts are accurately done
  • The account manager performs an sample/random audit of all the projects.
  • 100% quality check assured at any stage of the process

Interested in
Paralegal Services ?

Case Study

Docketing Support for a US based law firm

Client

Client Challenges

Our Solution

Impact for the client

Hear from Our Customers

Molecular Connections has been a great partner for our in-house paralegal team. They quickly came up to speed on our processes and portfolio and added immediate value by managing a key portion of our docket. They have helped to clear up a backlog of pending matters. I have found them to be very diligent in their work, particularly when it comes to managing deadlines and reminders.
Shareholder of a US law firm based in Utah
We recently engaged MC for managing the entire formalities function for our firm. They showed a high level of professionalism and were able to understand our needs very quickly. They were able to independently handle all our requirements within a month of staring the engagement. We look forward to continue working with them.
Partner of a UK law firm based in London
MC has been helping our department with proof reading and IDS preparation services. I have found them to be very responsive and meticulous while also giving keen attention to details. I am very pleased with their professionalism and deliverables and happy to recommend their services.
IP Counsel of a Fortune 500 company in Hi-tech industry based in Silicon Valley

WHY MCRPL?

People

Process

Features

Interested In
Paralegal Services ?

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