USPTO overseas: filing and prosecution from Israel
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.
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.
"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."
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 interacting with the examiner outside of 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 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. This 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 practice, our firm can now provide non-US clients US IP services, but during their working day.
When a European client comes into work to find an urgent US-related matter waiting in her inbox, she can contact me and get near-immediate confirmation that we will take care of it, and I can call her immediately if there are any last-minute questions. And while our Asian clients might have to wait a few hours before the start of our workday, we are still closer than the US, and we can confirm receipt of their instructions, and provide them with peace of mind before they finish work for the day.
Our location also allows us to work substantively with our non-US clients without the time delay inherent in working with US-based firms. For example, I prepared a declaration for an inventor in Europe for submission along with an office action response. Just before finalising the declaration, and on the day before the response was due, the inventor provided last-minute comments for inclusion in the declaration. Because of our location, I was able to make the few, but significant, revisions within minutes, get a signed declaration soon after, and file the response without need of an extension.
When I was working in the US, these real-time, rapid-turnaround interactions were part of my day-to-day business. However, only in the past year have our clients, whether based in Israel, Europe or the Far East, been able to benefit from this, translating into better service for our clients, as well as cost savings.
Attention to cost is just one way that our non-US perspective benefits our clients. After nearly two decades obtaining IP rights for non-US clients, our firm understands that for a non-US inventor, company or institution, the contribution of a US IP right to overall business development can be huge.
For some of our clients, obtaining a US patent or registered trademark will strongly influence entry into the US market, and the ability to obtain investment needed to continue the business, and may influence the interest of potential buyers.
Mike Hammer is manager of the US practice at JMB Davis Ben-David. He can be contacted at: mike.hammer@jmbdavis.com
