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USPTO overseas: filing and prosecution from Israel

01-05-2014

Mike Hammer

USPTO overseas: filing and prosecution from Israel

Rostislav Glinsky / Shutterstock.com

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.

Just 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. After 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.


USPTO, patent filing, patent prosecution, trademark,

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