IP Portfolio Management

LexOrbis blends decades of IP knowledge, razor sharp processes, and proprietary technology to offer our clients end to end IP solutions. We have a strong team of over 100 paralegals well trained on the procedures and nuances of US and non-US IP prosecution. Our team has worked with over 15 docketing systems and can adapt and support any new system within a short time span. Our multi-layered quality control process with both automated and manual checkpoints provide unmatched quality output.

Our offerings include:

IP Docketing

The process of recording and maintaining deadlines is the most critical and often tedious element of IP prosecution.

Our trained team of docketers supports both corporate and law firm clients in creating, updating, and managing IP dockets. Our team is well versed with all the US and Non-US docketing rules and trained to work with multiple docketing systems. With a robust quality control system and proprietary in-house tools for regular PTO audits, we offer our clients accuracy, timeliness, and seamless support. We are in the process of upgrading our information security system to comply with the latest version of ISO: 27001:2022 and ensure clients of data security and absolute confidentiality.

With our well-trained team, we can offer both offshore support from our centers in India and onshore in the US. A dedicated transition team ensures that all processes are carefully mapped and tested before implementation and drives focus on continual improvement.

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Data Validation

The accuracy and consistency of IP data are paramount. A docketing system is managed by various individuals such as a docketer, paralegal, and at times by legal assistants as well. With multiple people entering data in multiple ways over a period, the accuracy of data is compromised. Incorrect critical data like the bibliographic information, filing details, priority details and maintenance details can lead to some serious errors resulting in loss of rights.

It is a best practice to periodically undertake a data verification project where our experts with the help of automation and human intervention check the sanity of the data with the data available across various PTOs. Where the data is not available publicly, we use our agent network to get the data verified.

Our team has undertaken more than hundreds of small and big data verification projects with both law firms and corporates covering patents, design, and trademark data verifications. We follow a semi-automated process to ensure 100% accuracy. We have a robust agent network that helps us in data verification for the jurisdictions where the data is not available online.

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Invoice Management and Spend Analysis

The Invoice Management and Spend Analysis review provides visibility into the overall IP spend, captures data, spending trends, technology-wise distribution, etc., and enables clients to make better business decisions with a full view into their current IP spend. This review can be done as a one-time project or on a continuous basis.

All we require from you are the fixed fee schedules for prosecution tasks, fee for engaging service providers for fixed services, and schedule of overhead charges. We collect and manage the service provider invoices from your mailbox. Each client’s requirements are different, and we understand that hence we assign a dedicated resource to your account. We specially lookout for any duplicate invoices to save cost. Our monthly report helps our clients to forecast monthly spends much more accurately.

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IP Recordals

Recording correct ownership of your IP assets with the patent and trademark offices is the key and choosing the correct partner for the project is very important. IP assets can change hands due to mergers, acquisitions or simply selling and buying but the process to keep it updated with various jurisdictions gets complex and tedious. An in-house team along with their regular day-to-day work might struggle to initiate or see the project through.

Our IP team along with our strong agent network makes this process seamless and cost-effective for our clients. We know what documentation and associated fees are required for various jurisdictions and can provide you with a cost estimate to be factored while considering the project. Our team can provide you with a realistic timeline for the completion of recordals which can assist your management to make informed decisions.

Our dedicated IP recordals team has completed more than 100 recordal projects covering almost 180 jurisdictions. Our strong agent networks across the globe help us provide predictable pricing and accurate turnaround time.

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Patent Annuities

Patent rights, once established, are not permanent. The protection they offer must be renewed regularly through the payment of annuities, also known as patent renewal fees. If unpaid, the patent lapses.

Annuities differ from one country to another not only in terms of the fee to be paid but also the frequency of payments. In some jurisdictions, the annuity starts from the moment an application is filed and for other jurisdictions, it is due after 3.5 years of the grant.

With more than two decades of experience, we know that the best solution is one that fits your organization’s precise requirements. We provide a competitive fixed-fee cost structure for all patent annuities, based on the number of cases and the jurisdictions. Our strong agent networks provide us with the latest changes in laws which can at times help our clients save costs on annuities. We constantly negotiate fees with our agents based on the volumes and pass on the benefits to our clients.

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Trademark Renewals and Restoration

Once a trademark gets registered with the national trademark office, an applicant needs to get it renewed within a certain period of time to keep the trademark alive, else the applicant may suffer a loss of rights for the trademark.

The renewals process requires consistent monitoring. Our specialist team with knowledge of all statutory requirements tracks the timelines, updates the client, and seeks approval to proceed with renewals with various trademark registries.

Our strong agent networks provide us with the latest changes in laws which can at times help our clients save costs on renewals. We constantly negotiate fees with our agents based on the volumes and pass on the benefits to our clients.

If in case the renewal period has lapsed and no application was filed prior to the expiration, then the trademark owner can apply for restoration of the trademark. In some jurisdictions, there is a grace period following the expiry of a trademark. During this time, the trademark can still be renewed upon payment of the renewal fee plus the surcharge fee. Our team can also help you restore your trademark.

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Special Projects

Every IP team and professional has come across a situation where they must work on some projects which are not regular and are not part of their day-to-day activities. These projects could be very important for the attorney or the client, but the IP team does not have spare resources or time to undertake these projects as they all are caught up with their regular docketing and paralegal activities.

We understand these needs and have a dedicated team to assist you with all your special projects, ensuring there is no impact on your regular day-to-day activities. Our team has undertaken varied types of projects like:

  • Matter creation
  • File history transfer
  • Docketing system migration support
  • Patent file wrapper review
  • Holiday coverage and backlog clearance

We understand your requirement, document the critical aspects, work on sample cases for review, make changes to the process if required and deliver the project within the deadline.

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