Transfer in the ownership of IP assets that occur during business transactions such as acquisition, merger etc. need to be recorded in national and foreign patent offices from which patent(s) are obtained. In the same way a change in address, change in address for service etc. also needs to be recorded in different patent offices. This is a highly complex task especially if it involves a substantial IP portfolio. If not done meticulously and within the stipulated time period, it can have serious repercussions for the IP right holder vis-a-vis enforceability of the IP rights.

Prometheus IP has a team of experienced professionals who effectively manage such IP recordals including data verification, where required. Our paralegals verify the chain of title where the IP assets have passed through the hands of multiple entities. The necessary documents such as evidentiary documents, powers of attorney etc. are prepared and communicated with local agents for translation and other requirements. This is followed by filing at the respective patent offices. We track the status of IP recordals till they are accepted and updated by the patent offices.

Information disclosure statement (IDS) is a matter of legal practice to submit all relevant background art or information (patent as well as non-patent literatures) to the United States Patent and Trademark Office (USPTO) by an applicant during the patent prosecution process. We provide complete support in preparing and managing the Information Disclosure Statement (IDS) by meeting the latest guidelines as established by the USPTO.

File history of an IP asset refers to the legal record of communications between the patent office and the applicant/representative that had occurred during the prosecution of the application prior to issuance or rejection of the IP right. It contains statements made by the applicant and record of interviews between the applicant and the patent office.

With respect to patents, file history reports reflect the evolution of patent claims during the course of prosecution and can be insightful for litigation purposes, due diligence, licensing, business transactions etc. File history analysis fishes out relevant prior art references cited by the examiner and is useful for infringement proceedings. A clear idea on the scope of the claims is obtained during the analysis.

At Prometheus IP, our technology specialists and paralegals analyze the file wrappers diligently to offer succinct and comprehensive file history reports to the clients.

Prometheus IP offers proofreading services for patent applications and issued patents as well. We take due care in proofreading the claims, wherein we check for claim dependency, antecedent basis of claimed elements etc. We also take care in checking other formality requirements of the patent office and ensure that all the reference numbers of the diagrams are correctly incorporated in the specification.

Proof reading patent applications thoroughly before submitting to the patent office avoids unnecessary receipt of official letters from the patent office such as receipt of notices to file corrected application, notices to file missing parts etc. thus saving cost and time. It also minimizes the risk of objections/rejections being raised by the examiner because of the errors.

Issued patents being legal documents, should be devoid of any errors especially in claims section. The errors are made either by the prosecuting office itself or by the patentee. At Prometheus IP, we proofread issued patents meticulously to ensure that there are no mistakes in the documents. We ensure that the issued patent correctly incorporates all the amendments that were done in the specification, claims and drawings. If any mistakes are found we assist clients in preparing a certificate of correction.