Patent Prosecution Paralegal: Importance and Role

Patent attorneys are responsible for carrying out the tasks to get the patent registration of their clients. However, with so many clients to handle they find it difficult to manage each one in their patent prosecutions. Thus, they need an external assistant to manage the non-essential yet important work of their clients. If you are an IP attorney looking for same, you can hire a patent prosecution paralegal to ease out your work.

This article will tell you everything you need to know about a patent prosecution paralegal. So keep reading till end and increase your wisdom.

Also read: What does an IP litigation Paralegal Do?

What is meant by patent prosecution?

Prosecution means legal proceedings, thus patent prosecution is the law process to get the legal rights for your creations. These creations may be an invention, new design, new software, trademarks, etc. Thus, in patent prosecution you need to file the patent or trademark application with the United States Patent and Trademark Office (USPTO).

When the application is filed with the USPTO, the examiner studies the claims and evidences attached. The examiner also studies the technical scientific statements in the application. Once the requirements of USPTO are met, patent registration takes place. However, if there are objections in your application you will get office action and need to rectify your application.

So this process keeps repeated till you finally get the patent grant, this process in known as patent prosecution.

Who is a patent prosecution paralegal?

An IP paralegal is someone that works on the IP matters of clients of a patent attorney under the attorney’s supervision. Understand that, they are not the professionals who practice patent law, because they don’t hold license for so. However, they are yet important for clients as well as patent attorneys, because they help in many intellectual property prosecution matters.

So if you are going to hire an IP paralegal, make sure they have additional knowledge in science subjects like engineering, chemistry or physics, etc.

Patent paralegal starts with providing support to IP attorneys in matters of managing client database, docketing, etc. Read further to know more about their responsibilities.

Responsibilities of an IP Paralegal

Patent prosecution paralegals assist the IP attorneys in helping their clients get their IP rights smoothly from USPTO. They may also involve in assisting the attorneys, on special patent projects. Some of their major responsibilities are following:

  • Collaborate with IP attorneys, USPTO and clients to assist in patent prosecution.
  • Extract important and relevant IP data from USPTO and use them as per clients interest of attorneys.
  •   They generate docket reports, perform patent docketing, and track the deadlines of USPTO for the clients.
  •  Help IP attorneys in patent filing by drafting application omit errors, and proofreading the application.
  • They manage all the IP records of the patent clients of attorneys.
  • Process all the incoming and outgoing messages from client and USPTO.
  • Representing in court on clients behalf for all the legal proceedings on patent issues.

What are the key requirements that must be in a Patent Paralegal?

Since patent prosecution paralegal helps in IP matters of patent law firms, thus they must have good IP knowledge. It includes, IP filing, proofreading, docketing knowledge, etc. IP law firms need a paralegal that will act as a team player, whose involvement supports the patent attorney and amplifies the satisfaction of their clients. IP paralegal also must have experience in managing IP records and patent docketing.

Who provides best Patent Prosecution Paralegal services?

Hiring a right patent prosecution paralegal will help you in giving the best services to your clients. This will earn you more business as an IP attorney in the market. However, if you will choose the wrong IP paralegal, it will do more harm to you than good. Thus, you need to choose the one who is reliable and experienced. That’s why we present you the paralegal services of our, i.e. “Patent Paralegal Force

We have earned clients in more than 45+ countries it’s all because of our reliable services. Our team includes the professionals having rich experience in IP law dealings. We provide our paralegal services using state of art tools. We totally understand your work first and then proceed with our services. Read more about our services here.

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