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Contract analysis / letter-to-trident-ips-docket-hold.docx
letter-to-trident-ips-docket-hold.docx
High · 1
Medium · 4
Standard · 2
1. Purpose and Background
1. Purpose and Background As you know, Calderwood & Harkness LLP ("C&H") serves as outside intellectual property counsel to Optiwave Semiconductor Corp. ("OWS") for patent prosecution matters under the above-referenced matter number. We write to provide revised docket-management instructions for all OWS pending patent applications currently tracked and managed by Trident intellectual Property Services, LLC ("Trident
2. Scope of Hold — Applications Covered
2. Scope of Hold — Applications Covered The hold applies to all twelve (12) pending patent applications in the OWS patent family, which are organized across three sub-families. Each application, its filing details, and its associated jurisdiction are identified below for your reference. All of the applications listed below ultimately claim priority, either directly or through one or more intervening applications, to
3. Continuing Deadline Monitoring Obligations
Medium
⚑ Liability cap to check against exposure
3. Continuing Deadline Monitoring Obligations Notwithstanding the hold on active filings described herein, Trident IPS must continue to monitor all statutory and regulatory deadlines for every application listed above with the same degree of care, accuracy, and diligence as if the docket were fully active. The purpose of the hold is to suspend discretionary prosecution activity — not to suspend the vigilance required
4. Notification and Alert Protocol
Medium
⚑ Notice / time limit to track
4. Notification and Alert Protocol During the hold period, Trident must implement a heightened notification and alert protocol to ensure that C&H has adequate advance notice of all approaching deadlines. The following three-tier alert structure is to be applied to every deadline for every OWS application: (i) First Alert — Ninety (90) Days. Trident must alert C&H of any approaching deadline no fewer than ninety (90)
5. Known Upcoming Deadlines of Particular Concern
Medium
⚑ Liability cap to check against exposure
5. Known Upcoming Deadlines of Particular Concern Our lead associate, Christy Bauer, has identified the following known deadlines that are of particular urgency and require heightened monitoring by Trident. While the general three-tier alert protocol described in Section 4 applies to all deadlines, C&H requests that Trident exercise special vigilance with respect to the following: (a) U.S. Application No. 17/672,204
6. Actions Not Covered by the Hold
High
⚑ Non-compete / exclusivity restraint
6. Actions Not Covered by the Hold For the avoidance of doubt, the following types of actions are expressly excluded from the scope of the hold and should continue to proceed under Trident's existing standing instructions and normal operating procedures: (a) Annuity and Maintenance Fee Payments. Payment of any required annuity fees or maintenance fees for OWS's thirty-one (31) issued U.S. utility patents currently ma
7. No Filings Without Express Written Authorization
Standard
⚑ Commercial term
7. No Filings Without Express Written Authorization To reiterate in the clearest possible terms: no filings of any kind are to be made on any OWS application without prior written authorization from either Christy Bauer or Catherine Bloom at C&H. This prohibition encompasses, without limitation, the following categories of filings: • Responses to Office Actions (whether non-final, final, or advisory); • Requests for
8. Coordination with Foreign Associates
8. Coordination with Foreign Associates C&H is separately instructing OWS's foreign associates to hold on all discretionary filings for OWS applications within their respective jurisdictions. Specifically: • Nakashima & Togawa Patent Professional Corporation ("N&T"), based in Tokyo, Japan, is the foreign associate responsible for JPO matters, including B4 (JP 2024-542197) and C3 (JP 2024-542305). C&H is issuing paral
9. Duration of Hold
Medium
⚑ Notice / time limit to track
9. Duration of Hold The hold described in this letter will remain in effect until C&H provides Trident with written notice of reactivation or modified instructions. There is no predetermined end date for the hold. C&H anticipates revisiting the hold status as the client's budget situation evolves and as the prosecution posture of individual applications develops. However, we are unable to provide a specific timeline
10. Contact Information
10. Contact Information The following C&H personnel should be contacted regarding all matters relating to the OWS docket hold: Christy Bauer (Primary Contact) Lead Associate, intellectual Property Group USPTO Reg. No. 74,329 Calderwood & Harkness LLP 555 California Street, 42nd Floor San Francisco, CA 94104 Email: cbauer@calderwoodharkness.com Direct Dial: (415) 392-7834 Peter Vassiliev (Backup Contact — Internationa
11. Confirmation Request
Standard
⚑ Commercial term
11. Confirmation Request We respectfully request that you confirm receipt of this letter and acknowledge the hold instructions set forth herein in writing within five (5) business days of the date of this letter — i.e., no later than September 19, 2023. Your written confirmation should be directed to Christy Bauer at the email address provided above, with a copy to Catherine Bloom. In addition, we request that you co