Responsible for entire U.S preparation and prosecution of Paris and PCT filings targeting electrical, mechanical and computer devices for some of Japan’s largest manufacturers involving: electronic sensors, relays and switches, LED video displays and camera technology, dental diagnostic and imaging devices, and construction and mining equipment. Constantly collaborated with Japanese patent attorneys and inventors to discuss claim strategy, patentable features of applications as well as office action response strategies. Conducted examiner interviews to expedite prosecution matters to allowance. Translated patent claims from Japanese to English for prosecution and litigation matters.

Oversaw foreign prosecution and provided opinions on matters relating to U.S. patents and applications. Provided advice/support on litigation and transactional matters involving U.S. intellectual property issues. Updated Japanese patent attorneys and staff on current U.S. practice and U.S. legal developments. Provided general advice in connection with copyright/trademark matters and other related matters.

Analyzing, translating and preparing Japanese litigation documents for various ongoing lawsuits.

Headed up IP due diligence for large-scale takeover of U.S. Imaging Company. Investigated adversary patent portfolio and provided freedom to operate analysis. Prepared trademark office action responses. Researched antitrust issues and provided client memorandum in preparation for meetings with competitors. Provided summary judgment motion draft and assisted in settlement negotiations in products liability action. Prepared demand letters for franchisor in collection matters. Drafted contracts related to long-term joint venture manufacturing project and lease of machinery.

Drafted provisional and non-provisional patent applications. Prepared written responses to Office Actions and participated in patent examiner interviews. Procured various patents related to medical devices, semiconductor fabrication, internal combustion engines and sports equipment. Advised clients on infringement and licensing issues. Counseled clients on prior art searches and filing of continuation and PCT applications. Drafted and amended licensing agreements. Provided litigation support in patent infringement cases. Prepared and responded to requests for document production and requests for admissions. Devised theories of defense to misappropriation of trade secrets and unfair competition allegations. Provided non-infringement and invalidity opinions.