- 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.
Paralegal & Case Management
Everything an In-House Staff Can Do
USPTO Office Action Responses
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.