Patent Proofreading

Patent_Proofreading

Patent proofreading involves complete scrutiny of patent and patent applications. A significant percentage of issued patent have errors which had occurred during the drafting or prosecution stage. These errors might limit the scope of the patent or lead to its revocation post grant. Although a laborious task, it is crucial to proofread patent applications to identify discrepancies in patents such as missing antecedent references, incorrect status indicators, and inconsistent numbering of claims, incorrect names of inventors, attorneys or assignees, spelling mistakes, or any preliminary amendments during the prosecution stage. The errors in the priority information might lead to serious repercussions which may even result in abandonment of a patent.

The proofreading process involves technical and legal understanding of the patent application. Our team performs a detailed analysis of the prosecution history of the patent document to locate errors that are made either by the applicant or patent office. Over the years, we have worked with various Fortune 500 companies and law firms and develop best proofreading practices for various jurisdictions including the US, EP, Australia, etc. We also prepare ready to file correction request (certificate of correction in USPTO) that can be filed with the PTOs, thus saving your time and costs.

Recent Projects

Patent Evaluation

One of the patent brokerage companies needed assistance in patent ranking and bucketing. Through our indigenous method of manual screening and ranking, we assisted the client in the evaluation of patent portfolio and identified patents worth monetizing. For the high value patents, we developed EoU charts that indicated commercial prospects.

 

Asian Language Search

We assisted a leading law firm in conducting native Chinese language searches. The objective was to uncover prior art references in the Asian languages that do not have an English language counterpart. The results identified were carefully screened in English language as well as native languages.

 

Patent Searches

A US-based technology company wanted to develop a patent filing strategy. The objective was to identify white spaces and technology which would enable them to channelize their research and development initiatives. Our team structured a methodical search strategy that comprised of defining apt technology taxonomy, identified and classified patents pertinent to the taxonomy. The search enabled the client to take well-informed decisions and save cost.

 

Patent Licensing Support

Effectual assisted a US-based company in successfully out-licensing more than 50 patents to multiple players, which resulted in maximizing revenue more than 60 million dollars. We worked closely with the company’s attorney to identify target products and companies and developed Evidence of Use charts and infringement contentions. Our team provided support in preparing claim to specification charts and prepared responses to invalidity contentions.

 

Patent Drafting and Filing

A California-based technology company wanted to protect their innovative software and associated products. Despite the stringent patentability criteria for software and business method arts, we assisted them in building a strong patent portfolio. We adopted a robust approach that included a strategically planned pre-filing search to locate patents in the similar technology domain and helped them to modify and re-draft the patent claims. Through this laborious process, we were able to procure a strong patent portfolio for the company and helped in increasing their revenue.

 

IP Support Services

A Silicon Valley-based IP law firm was facing challenges related to managing its docketing backlog. Effectual supported the firm through a dedicated team of paralegals who maintain and manage patent dockets and coordinate with the concerned attorneys in preparing filing forms, sending reminders, tracking deadlines, assignment documents, and document classification and management.

 

Information Disclosure Statement (IDS)

A leading corporate filed a significant number of patent applications and faced challenges with the preparation of their IDS forms. The arduous task involved tracking and identifying the IDSs filed globally. We assisted the client in gathering the prior art from various patent databases and track the references filed in the IDSs globally. We identified all the references in the patent application and submitted the IDS as per the guidelines defined by PTO.

 

Proofreading Services

A US based law firm based was facing challenges in proofreading patent applications. The objective was to highlight clerical errors and check the subject contextually. The client partnered with us to undertake the paralegal task and minimize the office action. We identified the clerical errors such as spelling, bibliographic details, consistency in terms, claim dependencies, etc. Our service yielded significant benefits in terms of minimizing work pressure and helped the client to focus on primary areas.

 
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