Specialized in the practice of patent law as well as located in proximity to the U.S. Patent and Trademark Office (USPTO), JDM Patent Law (JPL) is equipped to provide high-quality services in patent procurement, patent enforcement (through working with litigator(s) as a co-counsel), patent search, opinions and counseling, litigation support and other areas to serve needs of clients.
Patent Procurement
I specialize in patent prosecution and preparation in technical areas including wireless communications, software, user interfaces, hardware, electronic circuits, business methods and medical devices. My patent procurement expertise includes:
- Preparing and filing substantive Responses/Amendments responding to USPTO Office Actions, arguments submitted with Pre-Appeal Brief Request for Review, Appeal Briefs and Reply Briefs.
- Appealing to the Court of Appeals at the Federal Circuit.
- Preparing and filing provisional, non-provisional and PCT patent applications.
- Conducting in-person Examiner Interviews (due to our proximity to the USPTO).
Patent Post Grant Practices
After a patent is issued, from the patent owner's perspective, steps may need to be taken to defend the validity of the patent when a client is threatened with a patent litigation or when a patent litigation is pending. From the perspective of an accused infringer, steps may need to be taken to invalidate a patent when substantive issues regarding the validity of the patent are uncovered. I am equipped to help clients with conducting post grant proceedings aimed to achieve these objectives. My patent post grant practices include:
Inter Partes Review (IPR)
Legal Enforcement of Patent Rights
I also provide clients, usually as a co-counsel to a litigator, with litigation services as part of an overall patent enforcement endeavor. My patent litigation services include: preparing (including drafting) and sending a cease & desist letter to an infringer identified by a client, filing a patent infringement complaint against an identified infringer, drafting and filing court motions and opposition to court motions, filing and conducting an IPR proceeding, conducting and defending depositions involved in a legal proceeding, drafting licensing agreement as part of a settlement negotiation, and various litigation support services, which include: constructing details-based element-by-element claim charts for non-infringement and invalidity positions, drafting arguments supporting client’s claim constructions as well as arguments opposing the adversary’s claim constructions, to help clients prepare for depositions, drafting expert reports, preparing exhibits used in miscellaneous proceedings. My fees for the above-listed patent litigation services are usually very competitive compared to those charged by big or mid-size law firms.
Patent Search
Please refer to our Expert Patent Searching page for detailed information.
Opinions and Counseling
My expertise in both patent search and patent case law enable me to provide high-quality patentability, non-infringement and freedom-to-operate legal opinions. To accurately evaluate whether a new product or method entails significant risk of infringing a competitor’s valid patent claims, quality of patent research is the key. I have the needed expertise and experience to perform high-quality patent research, and thus have the capabilities to counsel clients, and render legal opinions, regarding risk of infringing a competitor’s valid patent claims. In particular, after an infringement search is performed, if, based on my expert analysis, a new product or method of a client is clear from potential infringement, we can render a non-infringement legal opinion. In situations where certain claims of the discovered patent pose significant risk of infringement, I have the expertise and work ethic to conduct a thorough search (for both patent and non-patent literature documents in the prior art) on the validity of the discovered patents, and to render a freedom-to-operate legal opinion if the researched claims of the discovered patents are analyzed to be invalid in view of discovered prior art documents.
Practice Areas
JDM Patent Law P.L.L.C.