US Patent Paralegal Services

Black Hills IP provides a a full range of intellectual property paralegal services including document preparation and filing, USPTO office action responses, patent term adjustments, foreign filing deadline reminders, information disclosure statements and official action reporting.

Document Preparation and Filing Services

Black Hills IP paralegals are highly educated professionals trained to support you throughout the entire patent prosecution process. Our procedures are designed to be flexible to accommodate your needs.  We use automation where possible to reduce human errors. The following is a sampling of the services we provide:

  • Utility Patent Applications
  • Design Applications
  • Plant Applications
  • Provisional Applications
  • Continuation/Divisional/CIP Filings
  • Formal Document Preparation
  • Assignment Recordation
  • Petitions
  • Continued Examination Requests
  • Amendments
  • Reissue/Re-Exam Applications
  • Patent Cooperation Treaty (PCT) Applications
  • PCT US National Phase Applications
  • Status Inquiries
  • Terminal Disclaimers

USPTO Office Action Responses

  • Attorney Preparation. A draft response to the office action is prepared by the paralegal and provided to the attorney enabling the attorney to more efficiently prepare the response for filing. The draft includes a claim history identifying each claim, any amendments made to the claim throughout prosecution as well as any art cited against each claim.
  • Office Action Filing. The response is reviewed, appropriate documents are prepared and sent out for signature and the response is electronically filed upon receipt of signed documents. The electronic acknowledgment is immediately forwarded to the client upon receipt.

Patent Term Adjustments

The Patent Term Adjustment is calculated independently of the PTO calculation using the file wrapper or data in your database. The PTA is calculated at the time of Allowance as well as Post-Issue. Petitions to correct the PTA are filed as requested when necessary.

Foreign Filing Deadline Reminders

Critical deadlines will not be missed. Periodic reports will remind you of critical dates including Foreign Filing, PCT National Stage and Direct National Stage deadlines. 

Information Disclosure Statements

Black Hills IP will track all prior art and cross-cite the prior art to all related matters (including the tracking of which references have already been cited and those that haven't) enabling the IDS process to be completed with ease and efficiency at any time.

Official Action Reporting

All actions received and filed on a client's behalf will be reported to the client in a timely manner. There are several ways this can be accomplished; we can send individual notifications on each action, we can distribute reports listing each action received and filed in a given timeframe, or we can update a file management system or database in lieu of sending formal notifications.  You pick the method that works the best for you.

Our sister company Black Hills Technology offers a full range of IP analytics solutions.

Go to top