Intellectual Property Law

Patent and Trademark Office Actions:

Unicita offers IP support services by drafting responses to patent and trademark office actions, trademark appeals and searches. Given the time consuming nature of responding to office actions, patent firms typically do not consider responding to office actions as a “profit center” for their business. Unicita’s flat fee pricing allows a profitable offering on such responses. Office actions are time consuming, and often a large number of prior arts need to be analyzed with regard to patent office actions. They are rarely filed within the three month timeframe. With a timely service delivery, payment of extension fees can be avoided. Unicita does not directly correspond with the inventor or end client. Unless the patent firm desires otherwise, our only point of contact is a patent attorney in the law firm requesting our service. The outsourcing of patent prosecution reduces the time taken to prepare a response to an office action by about 90%. Unicita further provides well researched and detailed responses to office actions received from the patent and trademark office in support of registration of trademarks. We prepare responses to trademark office actions relating to:

  • likelihood of confusion rejections
  • descriptive mark rejections
  • generic mark rejections
  • Geographically descriptive mark rejections, etc

Trademark Searches:

Unicita Consulting conducts analytical and comprehensive registrability trademark searches for registered trademarks and pending trademarks on trademark database, Indian Patent Office database, Madrid Express and Romarin database, etc. Trademark search reports are provided in a span of 1 working day, subject to receiving required information from the client. The search is conducted for marks that that sound alike, are similar or confusingly similar to registered marks etc. Unicita chooses the International Class(es) under which the mark may be filed according to the description of goods and services provided to us. The mark is further evaluated, to determine whether there is a likelihood of confusion with the use of client’s/applicant’s trademark of a product placed in interstate commerce and an opinion on the registrability of the trademark or service mark will be provided.

Trademark Appeal Briefs:

Unicita Consulting also prepares Trademark Appeal Briefs. When a final office action is issued during the prosecution of a trademark application, the applicant can either respond to the final office action or appeal the decision of the Examining Attorney to the Trademark Trial and Appellate Board. Unicita Consulting prepares appeal briefs with arguments dependent upon the nature of the Examining Attorney’s rejection.

Patent Searches:

Unicita Consulting provides comprehensive prior art searches to determine the patentability of an invention. It is prudent for the patentee to conduct a thorough and comprehensive prior art search prior to the preparation of a patent application. With highly qualified engineers employed especially to conduct these searches, results are provided in a span of 3 working days. To conduct a patent search, our team requires the disclosure of the invention provided by the client to the attorney. Our engineers thoroughly search databases of Delphion, U.S,PTO, WIPO, Bigpatents, Patentlens and the like and prepare a search report.

Patent Drafting:

At Unicita Consulting, we have drafted complex Provisional, Non-Provisional and PCT patent applications within a reasonable period of time. To begin drafting the application, we require the following information in the inventor’s disclosure of his invention - process flow diagram of all the steps of the invention; description of each step of the invention; description of the variations of each step of the invention and identification of one or more of the processes of the invention that is novel. With regard to the drawings, Unicita Consulting will require a block diagram of all the components of the system of the invention; description of each component and how it relates to the other components in the invention; description of all the possible variations of each component in the invention and identification of one or more of the components of the invention that are novel. Any available literature related to the invention such as design documents, product specifications, web links, technical papers, marketing brochures and the like should also be provided if available.