Prosecution of patent application may take up to several years depending upon the correctness of it. And as a patent attorney, you need to monitor the patent applications of all your clients. But keeping track of all such applications can become a hectic task for you. Thus, you need to hire patent paralegal that helps you with this task. Wondering, “What does a patent paralegal do?” They assist you at every step in patent prosecution of your clients.
Patent paralegal you hire handles the administrative work of the patent application of your clients. This, article will give you all the knowledge on, what does a patent paralegal do. Thus, keep reading all do.
Also read: IP Paralegal Services for Easy Patent Grant
What are Roles and Responsibilities of a Patent Paralegal?
When clients hire a patent attorney for their patent application prosecution, it’s the patent paralegal there who does much of the work. Thus, if you want to lower the burden on your shoulder as an attorney, hire a patent paralegal.
Patent paralegal job is to organize all the paperwork of patent application in an order. They enable a filing system that keeps all the clients application organized. Thus, any of your clients file can be accessed and referenced easily.
You can consider them as a point of contact between the clients and the patent attorney. They convey the communication between both of them, and make the patent grant easy for the clients.
Also read: Taking Paralegal help for Patent Search
Following are some of the duties that a intellectual property paralegal does –
- They conduct client interviews and act as general contact for the client and patent attorney.
- IP paralegals keep a track of all the communications received from patent office. Thus, your client never misses any updates and takes actions immediately. This, smoothens the patent grant process.
- You can use them for conducting investigations, collect statistical data, and do documentary research for patent applications of your clients.
- They also assist you in conducting legal searches such as, patent search, prior art search, trademark search etc.
- Help you in drafting the patent applications, legal documents, mails, and pleadings to both client and patent office.
- They attend administrative hearing for your client in patent office.
Areas you can expect the help from Patent Paralegal
Above you have got a general idea, what help does an IP paralegal provides you in managing your client’s applications. But this is not the only help you get from an IP paralegal. They specifically help you in many patent prosecution process that eases the patent grant for your clients.
- Preparing Patent/Trademark Application Draft
- Proofreading and filing the patent and trademark application
- Preparing and Filing office action response
- Providing patent docketing service
- Monitoring the patent and trademarks
Let’s read all these services by patent paralegals one by one.
Preparing Patent/Trademark Application Draft –
Draft of the patent application plays a crucial role in deciding the fate of patent grant. If the patent application fails to explain the use of invention to the examiner, then it will receive office action.
IP paralegals help in following ways to prepare the correct draft –
Meeting requirements:
Patent paralegals help you to prepare the application of your client that matches the requirements of patent office.
Easy to understand:
They make the patent application more comprehensive and easy to understand. With their help you only add the useful sentences in the application draft.
Explain novelty:
Patent paralegals find the evidences and compile them in the application draft. This proves the novelty of your client’s application for the examiner. Thus, your application receives green light from examiner.
Giving title to the application:
Title gives the insight about your client’s invention in few words. Thus, they ensure, it contains minimum characters and describes majority of your patent application. The prescribed limit is under 500 characters.
Explaining background of invention:
IP Paralegal carry extensive search, and help you put your client’s invention in correct field. It is necessary to do so, because you need to choose under which category you are filing the application. In short the filing category describes the technological domain of the invention. They also help in adding the information about any similar prior art known to the client. It is necessary to do, else the application faces office action.
Explaining the applicability:
An invention is of no use if it cannot solve the industry level problems. Thus, the patent application must reflect the real life use of the invention. They help you in explaining the same effectively in the patent draft. For this purpose, they work with the clients, and develop the comprehensive patent drawings.
Patent drawings give the visual representation of your client’s invention. This makes the complex feature of invention appear easy to understand for the examiner. Hence the invention looks applicable and gets patent grant easily.
Also read: How to draft a patent application?
Proofreading and filing the patent/trademark application –
Once the draft of your client’s patent or trademark application is ready, now is the time to file it. But, wait how do you ensure it will not receive the office action from patent office? The answer is proofreading the patent application draft prior to filing with patent office.
Benefits of proofreading the application before filing –
Yes, the patent paralegal does the help in proofreading of the application. Their help in proofreading enables you to find and omit or improve the things in draft that will bring office action later.
- Patent paralegals help in testing and explaining the applicability of invention during proofreading.
- They have full reading of the application multiple times, to find and omit the redundant sentences in it. This makes the application more concise and comprehensible.
- The reading they carry also helps in finding the grammatical mistakes from application. Thus, any error in sentence formation is also noticed and improved. It explains all the things in your application clearly.
- Proofreading of the application also helps in correcting spelling mistakes from the application.
- The drawings that you attach in the patent application are most prone to errors. Thus, the patent paralegals read all the drawings in the application. After studying they, make them match with standards of patent office illustration rules.
- They check the alignment of margins in patent drawings, labeling of all the diagrams, use of pencils. Patent paralegals also see the errors in making lines, likes dashed lines, solid lines, etc. If they are not matching the rules of patent office, they notify the clients of same, and change it.
Thus, with patent proofreading, you avoid the problems even before they become and actual problem for you and your clients. This further increases the trust of your clients on you as a patent attorney. Thus, you can expect to get more clients and more revenue in future.
Also read: Patent Proofreading: Is it really needed?
Patent paralegal for Preparing and filing office action response –
An office action is the communication sent to you by patent office. It is a document accounts for reasons and objections for rejection of your patent application. But receiving the office action doesn’t mean now the invention won’t get patent grant. Office action just reminds the inventor of errors in patent application and gives him the chance to improve these errors.
As a patent attorney you want to focus on your new clients. But at the same time you need to take care of your present clients. That’s where patent paralegal does the help for you. They study the office action report by patent office thoroughly and notify your clients.
The office action report also contains the deadline date by which you can refile the application. Thus, by meeting with the clients, patent paralegal discuss the office action report. If agreed, they correct the errors notified by patent office and refile the patent application.
Let’s read some common reasons for office action on patent application:
Non-novel invention
If a similar patent application is already pending with patent office before your patent application. Then, your patent application or invention is considered to be non-novel and receives office action.
Thus, patent paralegal carry extensive research and find the claims to prove novelty of your invention. The evidences will prove the non-similarity between the already filed application and your application. The office action response they file includes all these evidences and claims.
Multiple claims of your invention
The patent application you are filing must belong to one claim group only. Thus, upon examination if the application falls in multiple claims, it can invite office action. You will be asked to segregate your claims into different relevant groups. The patent paralegal does the same for your clients.
There are multiple other reasons also that invite office action. It includes, incorrect patent draft, incorrect patent drawing format, non-applicability of invention in patent draft, etc. Thus, hiring a patent paralegal will assist you as a patent attorney to handle all these things effectively.
Also read: Patent office action: Understand How to tackle it?
Providing Patent Docketing Service –
As a patent attorney your receive thousands of clients with their patent application annually. Thus it becomes chaotic for you to manage and keep record for all of them and the number will keep increasing. Further the earlier clients also need to be managed. It is because if they will miss the notifications from patent office, it will cost them a lot.
Thus, you need to hire the patent paralegal professional who does the patent docketing. They help you manage all the clients so they never miss important dates, notices, reminder, etc. from the patent office.
Whenever you receive a patent application of your client, the docketing service provides a unique marking number to them. These marks are name or file number, thus each document is scanned and stored electronically in the docketing software by patent paralegal. Now you can access any of these files any time you want.
So as soon as update from patent office comes, they enter that in the relevant file and send the timely notification to all your clients.
Below are some benefits of patent docketing service of patent paralegal professional:
- It helps you manage all the paper work in patent application and makes it less chaotic to handle. Patent docketing scans all the documents and them in electronic database, thus effort and space to store them reduces.
- Since all the data is in electronic form, hence you can retrieve any of the clients file any time you want.
- With patent docketing service, your clients keep receiving important updates timely. Thus, they remain happy with your IP services, this increases your reputation and you receive more business.
Which Patent Paralegal to hire to assist your Patent Law Firm?
You must have got a clear idea how chaotic it can be for you to manage thousands of clients. Once you will be managing all the applications, on grounds of preparing patent draft, proofreading, filing office action response, updating your clients. You will have no time left to address new clients, further the present clients will also suffer. It is because you won’t be able to provide them the quality of service they deserve. This will degrade your value in IP business. Thus, you need to hire patent paralegal professional like, “Patent Paralegal Force” to assist you.
Our services are designed keeping in mind to focus on patent attorneys. Our services keep giving you latest monitoring reports, on the patents of your choice. Thus, you can take the correct decisions for your clients. We work with team of highly trained patent professionals, who provide best IP Paralegal service using state of art tools. Choosing us you get help in patent drafting, proofreading, monitoring office action, etc. Read more about here.
Other related articles:
Why should I License my Patent?