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Since formation in 2018 Accel IP Law has been providing legal and management services for securing Intellectual Property (IP) rights internationally. In the past, our services were primarily provided to our clients in the U.S. or to assist partner firms in other countries requesting that we handle Paris Convention and U.S. National Stage Conversion based on applications originally filed in other countries.

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Our program covers (i) international filings of utility patent, design patent and trademark applications, (ii) attorney management and coordination of substantive examination among counterpart applications filed in different countries, and (iii) internal management of all administrative and procedural matters to assure timely responses to communications and cost effective delivery of services.

 

A reputable financial prediction model is used for two purposes. First, we roll up total costs of international filings based on an initial selection of country filings. This enables the client to compare projected filing costs with the client budget. This data provides an opportunity to consider lower cost options based on fewer country filings. Second, the model assists clients in making final decisions.  The financial model is also used to compare the Accel cost quotes with estimates based on market data provided with the prediction model.

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Program functions and responsibilities include:

• Internal management of all administrative and procedural matters by experienced staff to assure timely coordination and communication with staff in foreign offices of each country handling the acquisition and maintenance of the IP rights being secured under a counterpart application. All staff activities are managed by the Program Director who is responsible for all communications between the client, the program attorney and the foreign offices.

 

• Attorney management of substantive examination assures: (i) timely communication on substantive issues with the client; and (ii) linkage between the client’s country level market forecasts and enforceable Patent Rights to address future infringement activities. The Accel attorney is available with paralegal staff to provide counsel on potential steps to effect patent enforcement.  

The added value of our having a role in development of international filing strategies is proven to be particularly important to clients who do not have in-house processes to assure alignment between the client’s marketing plans and IP counsel responsible to develop and implement the IP Protection strategies being procured internationally.

 

The program also assures cost economy by entrusting non-legal work to experienced staff and limiting attorney costs to involvements which require legal insights and experience.

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With regard to the attorney role, our program has always been internally managed with necessary involvement of an IP attorney, or an experienced patent agent or a knowledgeable paralegal. This is with the purpose of assuring that cost effective filing strategies are based on informed client decisions, e.g., based on awareness of country-by-country sales forecasts, or locations of competitor activities, We actively seek continued engagement of the client in decisions affecting the scope, enforcement and cost of patent rights to protect client sales.

 

Additional information on Accel’s Global Program for Acquisition of IP Rights is available directly from the Program Director, Sergio Chacon Hoffmann: Contact Sergio at Schacon@Acceliplaw.com.

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