International Patent Prosecution Agency Needed – Transfer of 56 Pending Foreign Applications

Posted 4 weeks ago

Worldwide

Summary

We are a Korean company seeking a qualified international patent prosecution agency, IP law firm network, or foreign patent prosecution coordinator to assist with the transfer and future prosecution management of our foreign patent portfolio. This is not a new filing project. All applications have already entered the national or regional phase. The remaining work mainly involves prosecution management, Office Action responses, amendments, arguments, local counsel coordination, deadline management, and future prosecution strategy. Portfolio Overview Our portfolio consists of 3 patent families and a total of 56 pending foreign patent applications: - Patent Family 1: 18 jurisdictions - Patent Family 2: 18 jurisdictions - Patent Family 3: 20 jurisdictions - Total: 56 pending foreign patent applications The jurisdictions include: Australia, Europe / EPO, India, Indonesia, Mongolia, New Zealand, Russia, South Africa, Vietnam, United States, China, Brazil, Canada, Israel, Japan, Mexico, Philippines, Singapore, Thailand, and United Arab Emirates. Current Objective We are considering a full change of our current foreign prosecution management structure and local representatives. The goal is to transfer the existing pending applications to a new prosecution management structure that is more transparent, cost-effective, and better coordinated for upcoming Office Action responses. We are not looking for a single freelancer who claims to personally handle all jurisdictions. We are looking for a qualified agency, law firm network, prosecution coordinator, or consultant who can coordinate properly qualified local patent counsel in each jurisdiction. Scope of Work We are looking for a provider who can: 1. Coordinate the transfer of approximately 56 pending foreign patent applications. 2. Assist with change of representative / power of attorney procedures where required. 3. Reconstruct and verify the prosecution docket for all transferred matters. 4. Identify and coordinate qualified local patent counsel in each jurisdiction. 5. Disclose the actual local counsel, firm names, responsible attorneys/agents, and qualifications. 6. Provide Office Action reporting, strategy recommendations, and response coordination. 7. Provide draft amendments and response arguments for applicant review before filing. 8. Manage deadlines and provide regular docket reports. 9. Provide jurisdiction-by-jurisdiction cost estimates before any chargeable work is performed. 10. Provide volume discounts and repeated-analysis discounts where the same patent family, same claim amendments, or same prior art is involved in multiple jurisdictions. Commercial Condition The fixed-price budget shown in this job post is only a placeholder for the initial proposal stage. We are not asking candidates to perform substantive legal work, claim analysis, Office Action analysis, or confidential file review at this stage. At this stage, we are requesting only a non-confidential preliminary proposal, transfer plan, and fee schedule / fee cap structure. Please note that we do not expect to pay for a standard business proposal or fee schedule. Since this is a transfer of a sizeable pending prosecution portfolio and is expected to generate future Office Action response work, we do not expect to pay separate professional fees for basic onboarding, docket set-up, change of representative coordination, or basic file intake. Please propose one of the following structures: 1. Waiver of transfer-related professional fees; or 2. Full credit of transfer-related professional fees against future Office Action response fees. We are willing to give the selected provider priority consideration for the first substantive Office Action response work arising from the transferred matters, subject to: - conflict clearance; - acceptable fee estimates; - satisfactory service quality; - applicant approval of the proposed strategy; - applicant approval of the response draft before filing; and - compliance with agreed fee caps. No substantive work or chargeable action may be undertaken without our prior written approval. Fee Schedule Required Please provide a detailed fee schedule or fee cap for the following categories, separated by jurisdiction or jurisdiction group: 1. Basic transfer / docket intake 2. Change of representative / power of attorney handling 3. Basic file review 4. Substantive file review 5. Simple formal Office Action 6. Simple novelty / clarity / formality Office Action 7. Standard inventive step / obviousness Office Action 8. Complex multi-reference Office Action 9. Amendment-only response 10. Amendment plus argument response 11. Examiner interview, where available 12. Final Office Action / rejection decision response 13. Appeal / trial / review stage 14. Divisional / continuation / RCE, where applicable 15. Translation or back-translation 16. Extension of time 17. Urgent surcharge, if any 18. Central coordination fee 19. Local counsel fee 20. Official fees and out-of-pocket expenses We expect all official fees and out-of-pocket expenses to be charged at cost and only with our prior approval. Required Qualifications The ideal provider should have: - Experience managing international patent prosecution portfolios; - Experience transferring pending patent applications between representatives; - Access to qualified local patent counsel in the listed jurisdictions; - Ability to disclose actual local counsel and responsible professionals; - Experience with Office Action responses in major jurisdictions, including at least the US, EPO, China, Japan, Canada, Australia, India, Brazil, and Mexico; - Strong deadline and docket management capability; - Transparent billing and fixed-fee or capped-fee options; - Ability to communicate clearly in English; - Experience working with Korean or Asian corporate clients is a plus. Confidentiality No confidential invention details, patent numbers, Office Actions, claim sets, prosecution files, or prior art analysis will be shared before NDA and shortlisting. Initial proposals should be based only on the portfolio size, jurisdiction list, and general project scope described above. Please do not request confidential patent documents in the first message. Proposal Requirements In your proposal, please include: 1. Your experience with similar international patent prosecution transfer projects. 2. Your proposed transfer plan for 56 pending applications. 3. Whether you can support all listed jurisdictions. 4. Any jurisdictions from our list that you cannot support directly. 5. Whether you disclose actual local counsel names and qualifications. 6. Whether you can waive transfer-related professional fees or credit them against future OA response fees. 7. Your proposed fee schedule or fee cap by OA type and jurisdiction group. 8. Your volume discount structure. 9. Your repeated prior art / repeated family analysis discount policy. 10. How you manage deadlines and docket reports. 11. How you handle applicant review and approval of OA response drafts. 12. Whether there are any conflicts, sanctions restrictions, or representation limitations that may affect any jurisdiction listed above. Preferred Engagement Structure We prefer a staged engagement: Stage 1: Preliminary proposal based on non-confidential portfolio information. Stage 2: NDA and review of a limited sample matter, if needed. Stage 3: Final transfer plan and fee schedule. Stage 4: Full transfer of selected or all applications. Stage 5: Future Office Action response work under pre-agreed fixed fees or fee caps. Providers who insist on substantial separate onboarding or transfer professional fees without waiving or crediting them against future prosecution work are unlikely to be shortlisted.

  • $1,000.00

    Fixed-price
  • Expert
    Experience Level
  • Remote Job
  • Ongoing project
    Project Type

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Skills and Expertise
Mandatory skills
Patent
Patent Law
Legal
Activity on this job
  • Proposals:Less than 5
  • Last viewed by client:3 weeks ago
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About the client
Member since Dec 26, 2020
  • South Korea
    Seoul10:54 PM
  • $80K total spent
    85 hires, 32 active
  • 282 hours
  • Large company (100-1,000 people)

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