IP Docketers

Virtual IP Prosecution Paralegal

virtual IP prosecution paralegal

How Virtual IP Paralegals Can Assist in Managing the Workload of IP Attorneys & Law Firms

It takes time and money for virtual IP prosecution paralegal  attorneys, law firms, and lone IP practitioners to complete end-to-end IP tasks. Given the importance of carrying out these tasks, they frequently require assistance to lighten their workload. In these situations, virtual paralegal services are often a godsend in disguise. Please continue reading to learn every crucial detail about paralegals who assist IP attorneys and businesses in managing their increasing IP workloads. A case study of how our docketing services helped a US-based RPA company achieve IPO deadlines is also focused.

A virtual paralegal is an IP expert who may provide remote help to organisations like law firms, IP attorneys, and lone IP practitioners worldwide. They accomplish this by offering services for handling administrative, legal, and intellectual property (IP) issues.

Table of Contents

  • What Justifies Hiring a Virtual prosecution Paralegal?
  • The Services Virtual prosecution  Paralegals Provide
  • Considerations for Hiring Virtual Paralegals
  • Case Study: How We Helped a US-Based RPA Company Meet IPO Deadlines

What Justifies Hiring a Virtual Prosecution Paralegal?

You now better understand what a virtual paralegal does and why you should hire one.

Manages administrative duties and IP assets – A virtual paralegal can look after the IP assets of a solo IP practitioner, IP law firm, or IP attorney. They are also capable of managing time-consuming administrative drudgery.

  • Tracks IP Application Status – A virtual paralegal can keep tabs on any filed IP application(s), particularly their prosecution stage. Then, they can take on the necessary activities, including reacting to office actions (OAs).
  • Saves Time – Another benefit of hiring a virtual paralegal is that they free up IP attorneys, law firms, or single IP practitioners from spending as much time on administrative tasks. The time saved can be used to complete other essential duties or welcome new clients.
  • Sends Notifications When PTO Deadlines Approach – IP attorneys, solo IP practitioners, and law firms occasionally overlook significant Patent and Trademark Office (PTO) deadlines due to their hectic schedules. A reminder mail to remind people of the due date for OA responses, which communicate in several letters. Virtual paralegals can keep an eye on these scheduled dates and provide early reminders to ensure that every deadline reaches.
  • Prevents Payment of Additional Fees – By assisting with the timely submission of OA answers, virtual paralegals can aid IP attorneys or law firms in avoiding incurring additional fees for a time extension.
  • Avoids IP Application Abandonment – By timely submitting OA responses, a virtual paralegal can reduce costs and prevent the abandonment of IP applications.

The Services Virtual Paralegals Provide

Virtual paralegals can assist throughout the entire IP lifetime. We have listed these services in detail below:

 Pre-filing – To avoid getting an OA from the PTO, every IP lawyer plans to submit a perfect IP application. The applicant must ensure that PTO regulations submit the required paperwork to achieve this. Virtual paralegals can help IP attorneys or law firms prepare formal documents, such as assignments, power of attorney (PoA), and declaration because they are well-versed in the PTO requirements that must notice when filing IP applications. They can also verify that you have included all the required information and that it is accurate. Virtual paralegals can create a report and transmit it to attorneys for additional verification of any differences.

  • Application Submitting and Filing Package Preparation – Virtual paralegals can also assist with preparing formal documents, replacement sheets, preliminary modifications, application data sheets (ADS), information disclosure statements (IDS), and filing U.S. applications electronically.
  • IP Prosecution – Virtual paralegals may assist individual IP practitioners, law firms, and IP attorneys during the prosecution phase. They accomplish this by overseeing the client’s whole docket, going over the notifications of allowance, creating the 1.312 changes to prevent the need for additional charges for correction, and setting reminders before the deadline.
  • Post-Grant – Lastly, online paralegals assist by editing patents and creating certificates of rectification (CoR). Additionally, they aid in determining the precise Patent Term Adjustment (PTA) and expiration dates.

Considerations for Hiring Virtual Paralegals

Information Privacy –Virtual paralegals get a lot of sensitive information from clients (IP lawyers and law firms) that needs to be kept private, especially from rivals. Clients can sign a non-disclosure agreement (NDA) with the paralegals they intend to deal with to safeguard the privacy of any data. They can also urge paralegals to modify their systems so that nobody can send or receive emails from outside email addresses.

  • Access to Data – The possible virtual paralegal should also ensure that only authorised people can access the client’s data, including emails.
  • Experience – Attorneys specialising in intellectual property, law firms, and lone IP practitioners should ensure the virtual paralegals they hire have a strong background in their field. That is because paralegals who are accustomed to their surroundings can provide appropriate suggestions when needed.
  • Documenting the procedure – Finally, when managing the client’s project, the potential virtual paralegals should keep track of all the mutually agreed-upon procedures and steps. Making process manuals, instruction sheets, flowcharts, etc., is a part of this. As a result, paralegals and attorneys know the end deliverables and expectations, benefiting everyone.

Case Study: How We Helped a US-Based RPA Company Meet IPO Deadlines

Client Need: The client’s portfolio of patents and trademarks expanded quickly. They desired to move all of their internal data from spreadsheets to an online docketing platform to handle their dockets systematically. They had previously managed their portfolio and closely tracked their future PTO dates using technologies (like AppColl) but now required assistance with a more extensive portfolio.

IP Docketers Provides a Solution

Patent Docketers The first step taken by IP’s docketing team was to thoroughly comprehend the client’s needs before recommending a specific docketing tool.

  • The group then imported all the data from the spreadsheets into the programme and organised national records.
  • Then, to confirm the records’ accuracy, they went to the official PTO websites to check the bibliographic information.
  • Once the client could examine the database records, the team began routinely docketing all previously received emails onto the tool. They assisted the customer in setting up the docketing procedure by IP Docketers’ professionals in docketing administration.
  • Due to the ongoing nature of the project, the docketing team is currently updating the bibliographic data, creating tasks, setting deadlines following the PTO notices, and uploading the document to the relevant job to save the client from having to search their mailbox for the PTO notices.
  • The team routinely handles incoming emails now that the docketing tool and procedure have taken hold. The customer may quickly check the bibliographic information, PTO status, and upcoming PTO deadlines on a single web page, and the database is up to date.
  • For the client to respond to all notices promptly and prevent additional fees for extensions, IP Docketers IP also sends weekly and monthly deadline reminders.

IP Docketers IP assisted the client in setting up their docket management system and began managing all PTO deadlines. They displayed all their pending cases in one place, and their patents and trademarks were up to date. The list of forthcoming tasks that required a legal cost and the ability to review it helped them manage their budgets.


Organisations like IP attorneys, law firms, and even lone IP practitioners are now looking for virtual paralegal support to manage their workload. These organisations must ensure prospective paralegal service providers comply with their eligibility requirements and provide services across the IP lifecycle before working with them.

Getting help from IP professionals is essential if you are an IP attorney, a legal company, or even a solo practitioner looking for IP-related services. The Intellectual Property Management Solutions provided by IP Docketers IP include office action shell response, IDS preparation, patent proofreading, and patent docketing. View this webinar to learn more about virtual paralegals.