PRACTICE AREAS

We focus on IP procurement, client counseling, and administrative proceedings.

By partnering with experienced professionals in other legal fields such as business law and litigation practice, we offer clients a diverse range of services at a reasonable cost.

Patent Preparation & Prosecution

We provide a full range of services including drafting, filing and prosecuting utility, design, plant, and PCT international patent applications for U.S. and international clients.  We  procure patents in  information technology arts,  mechanical arts,  chemical arts, and biotechnology arts including telecommunications,  artificial intelligence, robotics, consumer electronics, optics, pharmaceuticals,  medical devices, materials, semiconductors, oil and gas exploration, petrochemical engineering, etc.

Our patent  practice also includes preparing and filing reissue applications, filing requests for supplemental examination and certificate of corrections, filing protests or pre-issuance submissions,  filing various petitions,  and conducting appeals before the Patent Trial and Appeal Board (PTAB).  We  have successfully procured patents for our clients. For example, our patent application allowance rate for a major global Fortune 100 company is above 90% while the average allowance rate in the same technology field is lower than 70%.

Post-Grant Proceedings

We prosecute ex parte reexaminations and conduct Post-Grant Proceedings (inter partes review (IPR),  post-grant review (PGR), and covered business method review (CBM)) before the Patent Trial and Appeal Board (PTAB).

Post-Grant Proceedings  have become an important alternative or additional venue to district court litigations after being created under the American Invents Act of 2011.  From its  establishment to February 2023, the PTAB has issued more than eleven thousand decisions in post-grant review proceedings – close to one thousand decisions per year.  In comparison, the average number of district court patent litigations that reached the trial stage stays about 100 in past decades[1].   Further, the USPTO indicates that a majority of petitioners have been sued by patent owners in another venue prior to filing their petitions for  Post-Grant Proceedings[2].  Patent owners as well as patent challengers are increasingly choosing Post-Grant Proceedings as a venue to resolve patent disputes, and we provide assistance through those Post-Grant Proceedings.

[1] https://ipwatchdog.com/2021/11/04/patent-litigation-in-the-united-states-1980-to-2020/id=139510/#

[2] https://www.uspto.gov/sites/default/files/documents/ptab_parallel_litigation_study_20220621_.pdf

Patent Legal Opinions and Counseling

We provide legal opinions on patentability of inventions, validity, infringement and freedom-to-operate in various technology areas.  We conduct comprehensive intellectual property audits for formulation of intellectual property strategies to capture, manage, and enforce the intellectual property assets of various startup and institutional clients.  We also negotiate and draft licensing or settlement agreements for patent owners and licensees.

Trademark

Our trademark practices include conducting trademark clearance searches, providing opinions regarding the availability for use and registration of the mark based on the search, filing and prosecuting trademark applications, maintaining registered marks, as well as handling all aspects of opposition and cancellation proceedings and ex parte appeals of adverse decisions rendered by the examining attorneys before the U.S. Trademark Trial and Appeal Board.

Copyright

We counsel clients, register copyrights, and draft agreements regarding copyright law. Although one’s creative work is protected under international copyrights when it is created, numerous, sometimes difficult, problems occur at times. We evaluate the copyright creation situation and determine the original owner of the copyright and prepare assignments and agreements to ensure that the rights under copyright go to the proper party. We also determine what is copyrightable and prepare copyright applications for registration with the U.S. Copyright Office to claim the rights in the copyright. In addition, we handle copyright infringement matters for the copyright owner or the alleged infringer as the case may be.

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