Performing end-to-end IP activities is both time-intensive and expensive for IP attorneys, law firms, and solo IP practitioners. Since it is crucial to conduct such activities, they are often in need of assistance to reduce their workload. Virtual paralegal service is often a blessing in disguise in such cases. Read on to know every important detail on paralegals who help IP attorneys and even businesses at large to cope with their ever-mounting IP workload. There is also a case study we have highlighted on how our docketing services assisted a US-based RPA company meet IPO deadlines.

A virtual paralegal is an IP professional who can remotely support entities, such as law firms, IP attorneys, and solo IP practitioners from around the world. He/she does this by offering a suite of services for managing the administrative, legal, and IP tasks.

Why Should You Choose a Virtual Paralegal?

Now that you know who a virtual paralegal is, let us take a look at the role played by them and why you should hire one:

• Manages IP assets and administrative tasks – A virtual paralegal can take care of the IP assets of an IP law firm, IP attorney or even a solo IP practitioner. He/she can also handle the mundane administrative tasks that take more time than necessary.

• Tracks Status of IP Applications – A virtual paralegal can keep track of the filed IP application(s), especially their prosecution status. He/she can then perform the necessary actions such as responding to office actions (OAs) if required.

• Saves Time – Yet another reason for choosing a virtual paralegal is that he/she helps in saving time by reducing the workload of IP attorneys, law firms or solo IP practitioners. This saved time can be used in performing other relevant tasks or onboarding more clients.

• Sends Reminders for Approaching PTO Deadlines – Due to the heavy workload, IP attorneys, solo IP practitioners or laws firms can sometimes miss out on important patent and trademark office (PTO) deadlines. This is because the PTO sends multiple notices mentioning the final deadline to file an OA response but does not send reminders to file those responses. Virtual paralegals can monitor these deadlines and send timely reminders so that no deadline is missed.

• Prevents Payment of Additional Fees – Virtual paralegals can assist in filing OA responses on time, thereby helping IP attorneys or law firms to avoid paying additional fees for extension of time.

• Avoids Abandonment of IP Applications – Besides saving costs, a virtual paralegal can also help in preventing abandonment of IP applications by filing OA responses on time.

Services Offered by Virtual Paralegals

Virtual Paralegals can offer support at every stage of the IP lifecycle. Below, we have mentioned these services in detail:

• Pre-filing – Every IP attorney intends to file a flawless IP application so as to avoid receiving any OA from the PTO. For accomplishing this, the applicant must ensure that all the necessary documents are filed in compliance with the PTO rules. Since virtual paralegals have extensive knowledge about the PTO rules that must be kept in mind at the time of filing IP applications, they can assist IP attorneys or law firms in preparing formal documents including assignment, power of attorney (PoA), and declaration. They can also check whether you have incorporated all the necessary information and whether that information is correct. In case of any discrepancies, virtual paralegals can prepare a report and send it to attorneys for further verification.

• Filing Package Preparation and Application Filing – Virtual paralegals can also help in preparing application data sheet (ADS), information disclosure statement (IDS), formal documents, replacement sheets, preliminary amendment, and filing U.S. applications electronically.

• IP Prosecution – Virtual paralegals can help IP attorneys, law firms, and solo IP practitioners during the prosecution stage as well. They do this by managing the entire docket for the client, reviewing the notices of allowance, preparing 1.312 amendment to avoid additional cost of correction, and setting reminders before the actual deadline.

• Post-Grant – Lastly, virtual paralegalsoffersupportby proofreading patents and preparing certificate of correction (CoC). They also help in calculating the correct Patent Term Adjustment (PTA) and expiration dates.

Parameters to Consider While Hiring Virtual Paralegals

• Data Confidentiality – Virtual paralegals receive a substantial amount of confidential and unpublished data from clients (IP attorneys and law firms) that must be protected, especially from competitors. For ensuring confidentiality of data, clients can sign a non-disclosure agreement (NDA) with the paralegals they plan to work with. Additionally, they can request the paralegals to customise their systems such that no one can send or receive emails from external email addresses.

• Data Access – The potential virtual paralegal should also ensure that the client’s data, including emails, can be accessed only by authorized individuals.

• Experience – IP attorneys, law firms and solo IP practitioners should ensure that the virtual paralegals that they are hiring hold expertise in their domain. This is because paralegals experienced in their domains can offer the right suggestions at the right time.

• Process Documentation – Lastly, the prospective virtual paralegals should document all the mutually agreed upon processes/steps while handling the client’s project. This includes preparing process manuals, instruction sheets, process flowcharts, etc. Doing so is helpful for both attorneys and paralegals as both parties are aware of the expectations and the final deliverables.

Case Study: How Our Docketing Services Helped a US-based RPA Company Meet IPO Deadlines

Client Requirement: The client’s patent and trademark portfolio was growing swiftly, and they wanted to manage their dockets systematically and transfer all their internal data from spreadsheets to an online docketing platform. They had previously used tools (such as AppColl) to monitor their upcoming PTO deadlines closely and manage their portfolio but now needed support with a larger portfolio.

Solution Provided by Sagacious IP

• Sagacious IP’s docketing team started by fully understanding the client’s requirements and suggested using a particular docketing tool that best suited their purpose.
• The team then transferred all the data from the spreadsheets to the tool and created country-wise records.
• Then they visited the official PTO sites to verify the bibliographic data to ensure the accuracy in records.
• The team then started regular docketing of all previously received emails on the tool so the client could view the records in the database. Sagacious IP’s docketing management experts also helped the client set up the docketing process.
• Since the project is now an ongoing one, the docketing team now updates the bibliographic data, creates tasks, sets deadlines per the PTO notices, and uploads the document in the corresponding job so that the client does not have to search for the PTO notices in the mailbox.
• Now that the docketing tool and process have been set up, the team is regularly processing current incoming emails. The database is up to date, and the client can easily view the bibliographic data, PTO status, and upcoming PTO deadlines on a single web page.
• Sagacious IP also provides weekly and monthly deadline reminders to the client so that the response to all those notices can be filed on time and avoid extra fees for extensions.

Outcome

Sagacious IP helped the client set up their docket management tool and started taking care of all the PTO deadlines. It allowed them to view their portfolio at a centralized location and have visibility of all the ongoing prosecutions and the current statuses of their patents and trademarks. It also helped them manage budgets by reviewing the list of upcoming tasks that needed an official fee.

Conclusion

With the increase in IP filings around the world, entities such as IP attorneys, law firms and even solo IP practitioners are now seeking virtual paralegal support to manage their workload. Before collaborating with such paralegals, however, it is imperative for these entities to ensure that the potential paralegal service provider meets their eligibility criteria and offers services throughout the IP lifecycle.

If you are an IP attorney, law firm or even a solo practitioner who is seeking IP-related services, it is crucial to get assistance from IP experts. Sagacious IP’s Intellectual Property Management Solutions offer patent docketing, IDS preparation, patent proofreading, and office action shell response. To know more about virtual paralegals, watch the webinar here.

– Sudipta Dey, Sourabh Singh (IPMS) and the Editorial Team

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