Patent Preparation and Prosecution

We provide services in drafting, filing and prosecuting utility, design, plant, and PCT international patent applications for domestic and international clients. The technology areas of the applications include electrical, mechanical, petrochemical, pharmaceutical, medical devices, biotechnology, business method, telecommunication devices, software, etc. Also, our patent practice includes preparing and filing reissue applications, filing protests in applications, and filing petitions.

Under the Patent Prosecution Highway (PPH), an applicant receiving a ruling from the Office of First Filing (OFF) that at least one claim in an application filed in the OFF is patentable may request that the Office of Second Filing (OSF) fast track the examination of corresponding claims in corresponding applications filed in the OSF. The USPTO has PPH agreements with various Intellectual Property Offices of Australia, Austria, Canada, China, Denmark, EPO, Finland, Germany, Hungary, Iceland, Israel, Japan, Korea, Mexico, Russia, Spain, Sweden, Singapore, Taiwan, and United Kingdom. According to the statistics provided by the USPTO, “[m]ore than 90 percent of PPH cases are allowed.” We have extensive experience in prosecuting patent applications by taking advantage of the PPH and PCT-PPH programs.

Under the America Invents Act of 2011, a third party may anonymously submit, for consideration and entry in the record of a patent application, any patents, published patent applications, or other printed publications of potential relevance to the examination of the application with a concise description of the asserted relevance of each document submitted. This mechanism of third party submission can be used by a third party to avoid potential infringement claims. We search and analyze prior art references relevant to the subject matter of the application, and prepare and file the third party submission with a concise description of relevance including a narrative description and a claim chart that maps portions of the documents to different claim elements.

Patent Monitoring

The America Invents Act of 2011 provides various mechanisms for a third party to challenge published patent applications and issued patents such as a third party submission, post-grant review proceeding, and inter partes review proceeding. To take advantage of these new proceedings, it is required to monitor periodically newly published patent applications and issued patents filed by competitors and in a particular technical area as soon as they are published. We monitor published applications and issued patents owned by competitors and in specific technology fields relating to the business of our clients on a weekly basis, and provide a report along with electronic copies of the published applications and patents sorted out in terms of the internal structure of design teams of the client.

Proceedings before the Patent Trial and Appeal Board

The Patent Trial and Appeal Board (PTAB) created under the America Invents Act of 2011 conducts inter partes review proceedings, post-grant review proceedings, and transitional post-grant review proceedings for covered business method patents. Based on our extensive experience in ex parte and inter partes reexamination proceedings, we practice in these new post-grant review proceedings before the PTAB for patent owners and third party challengers as well.

Under the America Invents Act of 2011, a person who is not the owner of a patent may file a petition for a post-grant review of the patent to invalidate one or more claims of the patent on any ground that could be raised under 35 U.S.C. 101, 102, 103, and 112 with the exception of compliance with the best mode requirement, within nine months after the date of the grant of the patent or of the issuance of a reissue patent. With limited exceptions, only those patents issuing from applications subject to first-inventor-to-file provisions are eligible for this new proceeding.

Under the America Invents Act of 2011, a person who is not the owner of a patent may file a petition to institute an inter partes review of the patent after the date that is nine months after the grant of the patent, requesting to cancel as unpatentable one or more claims of the patent only on a ground that could be raised under 35 U.S.C. 102 or 103 and only on the basis of prior art consisting of patents or printed publications. The inter parte reexamination proceeding is abolished and replaced by this inter partes review proceeding under the AIA such that we provide high quality of services in this processing for the patent owner or petitioner as well based on our expertise in the inter partes reexamination proceeding.

The America Invents Act of 2011 defines a covered business method patent as a patent that claims a method or corresponding apparatus for performing data processing or other operations used in the practice, administration, or management of a financial product or service, except that the term does not include patents for technological inventions. If a person has been sued for infringement of a covered business method patent or has been charged with infringement under the patent may file a petition for a transitional proceeding within any time of the grant of the patent.

Legal Opinions, Licensing and Valuation

We provide validity, invalidity, infringement, non-infringement, and freedom-to-operate opinions relating to various technologies. Also, we prepare opinions on the potential patentability of inventions, estimate a patent value for licensing and calculating patent infringement damage, and negotiate and draft licensing or settlement agreements for patent owners and licensees.