USPTO OVERSEAS
How can an IP firm outside America represent a client before the US Patent and Trademark Office? It has great benefits for many of his firm’s clients, explains Mike Hammer.
J
ust over a year ago, I was entrusted with directing the US operations of JMB Davis Ben-David. As our firm is based in Israel,
I was to do this from my desk in Jerusalem, some 7,000 miles away from the US. Given the way IP law is traditionally practised globally, this was not an immediately obvious service for our firm to provide. Aſter all, how can an IP firm located outside the US represent a client before the US Patent and Trademark Office (USPTO)?
In retrospect, this decision was highly logical and helpful, to both our domestic clients and many of our overseas clients. Our experienced team includes several US-licensed patent attorneys and agents, some of whom worked at US law firms before moving to Israel. Our clients are continually seeking to decrease costs, and increase speed and efficiency. But still, did it really make sense for clients to use an Israel-based firm to represent them or their clients before the USPTO?
As our clients in Israel, Europe, Asia, Australia and New Zealand will testify, we represent our clients before the USPTO the same way as any US-based firm, but from a physical location that is more convenient for our clients than a US-based firm, and with a cost structure that is based on Israeli overheads rather than those of the US.
Like nearly all US firms, we file patent and trademark applications electronically; and unless the USPTO requires original copies of documents, all post- filing communications are also filed electronically. Likewise, we receive daily email notices from the USPTO indicating available communications in an application’s electronic file. Other communication with the USPTO is by telephone, including examiner interviews.
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PROXIMITY AND PERSPECTIVE: A YEAR OF DIRECT USPTO FILING AND PROSECUTION FROM ISRAEL
Opinions vary widely among US practitioners as to the benefit of in-person versus telephonic examiner interviews. In my experience, opening a channel of communication with an examiner by telephone provides equal if not better results for an applicant in comparison to a potentially more adversarial face-to-face meeting. By examiner outside of
interacting with the formal written exchanges,
and by telephone, we strive to create a vehicle for active, informal engagement in order to advance prosecution; a single (very costly) face-to-face interview cannot achieve this.
In one very typical conversation with an examiner (with the sound of his children in the background— he was clearly in his home office at the time) I was able to review different possibilities of claim language that would be mutually acceptable both to him and to our client in just a few minutes, something which is almost impossible in formal, written exchanges. Demonstrating our availability to examiners also encourages them to reach out to
World Intellectual Property Review Annual 2014
us to authorise their own proposed amendments and thus avoid an additional round of prosecution.
Electronic filing and telephone interviews bring the USPTO closer to us, and allow us to represent our clients in the same way as any US-based law firm would. Our location in Israel also allows us to bring the USPTO closer to our non-US clients. Our workday overlaps by several hours with Asia and is nearly co-extensive with Europe. Tis enables our clients in these locations to interact with us, and by extension the USPTO, in a much more direct way than if we were located in the US.
Good timing On one level, the benefit of our location to clients in Europe, Asia, and Israel boils down to our ability to respond in real time to their instructions. When I was working in the US, my US-based clients could take it for granted that I could service their needs and respond to their questions during their working day. While this has not generally been the case for the rest of the world, with the initiation of our US
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