Contract analysis

I. Purpose and Summary The purpose of this memorandum is to analyze Calderwood & Harkness LLP's ("C&H" or the "Firm") continuing professional and regulatory obligations to Optiwave Semiconductor Corp. ("OWS" or the "Client") with respect to monitoring and communicating upcoming patent prosecution deadlines during the current dormancy period. This analysis is undertaken notwithstanding — and indeed because of — the ou

II. Factual Background A. The Engagement C&H's engagement by OWS was formalized pursuant to an engagement letter executed on February 10, 2022, which was countersigned by Marcus Whitfield, General Counsel of Optiwave Semiconductor Corp. The matter was opened in the Firm's conflict-checking and billing systems on February 14, 2022, and was assigned C&H Matter No. 1014-00005. The engagement team has remained consistent

1. On September 12, 2023, C&H instructed Trident intellectual Property Services, LLC ("Trident IPS"), the Firm's docketing and foreign filing coordination vendor, through its account manager Lisa Cheng, to hold all non-critical filings across the OWS docket but to continue deadline monitoring and alerting without interruption.

2. On September 15, 2023, C&H issued a formal dormancy acknowledgment letter to Marcus Whitfield, confirming C&H's understanding of the budget constraints, outlining the applications that would remain on hold, and noting C&H's continuing obligation to monitor deadlines and notify OWS of impending actions. The letter requested that OWS confirm its understanding that the dormancy could result in missed deadlines if C&H

3. On September 20, 2023, C&H issued hold notices to Nakashima & Togawa (through Kenji Nakashima, partner), the Firm's foreign associate in Japan, regarding the JPO applications B4 (JP 2024-542197) and C3 (JP 2024-542305), instructing N&T to suspend all non-mandatory filings pending further instructions.

4. On November 30, 2023, C&H queried Breitenfeld & Vogt (through Dr. Matthias Vogt, partner), the Firm's foreign associate in Germany handling EPO matters, regarding the status of the Extended European Search Report ("EESR") for EP Application No. 23 741 682.3 (B3) and any approaching deadlines. The dormancy has persisted for approximately seventeen months as of the date of this memorandum. No indication has been rec

1. March 9, 2025 — Application A1 (U.S. App. No. 17/672,204) — Office Action Response This is the absolute final deadline for responding to the outstanding non-final Office Action in the foundational U.S. application for OWS's core modulator architecture. Peter Vassiliev purchased a two-month extension of time on September 6, 2023 (at a cost of $640), and all available extensions under 37 C.F.R. § 1.136(a) have been

2. April 21, 2025 — Application B1 (U.S. App. No. 17/814,057) — Restriction Requirement Response The deadline for responding to the Restriction Requirement issued by the USPTO in Application B1 falls on April 21, 2025. The four-month extension of time was purchased on October 18, 2024, at a cost of $2,560, authorized by Sandra Koh under a narrow exception to the budget freeze. Additional extensions may be available u

3. May 17, 2025 — Application B3 (EP 23 741 682.3) — EPO EESR Response The deadline for responding to the Extended European Search Report in the EPO regional-phase application B3 is May 17, 2025. Under the European Patent Convention ("EPC"), failure to respond to the EESR within the prescribed period results in deemed withdrawal of the application — an outcome that, unlike USPTO abandonment, cannot typically be rever

4. July 9, 2025 — Applications A4 (PCT/US2023/010584) and A5 (PCT/US2023/010612) — National-Phase Entry Deadline The 30-month deadline for entering the national phase from the PCT international applications A4 and A5 is July 9, 2025 (calculated from the January 10, 2022 priority date of U.S. Provisional App. No. 63/297,841). This deadline requires OWS to make affirmative jurisdictional decisions — specifically, which

5. January 9, 2026 — Applications B4 (JP 2024-542197) and C3 (JP 2024-542305) — JPO Examination Request Deadline Under Japanese patent law, an examination request must be filed within three years of the international filing date. The deadline for B4 and C3 is January 9, 2026. While this deadline is the furthest out of the five tiers, failure to file an examination request by this date will result in the applications

III. Legal Analysis — California Rules of Professional Conduct Calderwood & Harkness LLP is organized and headquartered in the State of California, and all members of this engagement team are members of the State Bar of California. The California Rules of Professional Conduct therefore govern C&H's professional obligations to OWS. The following analysis addresses the three rules most directly implicated by the dorman

IV. Legal Analysis — USPTO Rules of Practice In addition to the California Rules of Professional Conduct, all four members of the C&H engagement team are registered patent attorneys before the United States Patent and Trademark Office and are therefore bound by the USPTO Rules of Professional Conduct set forth in 37 C.F.R. Part 11. These rules incorporate standards substantially analogous to the ABA Model Rules of Pr

Section 11.103 of Title 37 of the Code of Federal Regulations provides: "A practitioner shall act with reasonable diligence and promptness in representing a client before the Office." This provision is the USPTO analog to California Rule 1.3. It applies to all four registered practitioners on the engagement team: Catherine Bloom (Reg. No. 58,412), Alan Ngo (Reg. No. 61,877), Christy Bauer (Reg. No. 74,329), and Peter

Section 11.104 provides: "(a) A practitioner shall: (1) promptly inform the client of any decision or circumstance with respect to which the client's informed consent is required; (2) reasonably consult with the client about the means by which the client's objectives are to be accomplished; (3) keep the client reasonably informed about the status of the matter; [and] (4) promptly comply with reasonable requests for i

Section 11.116 is the USPTO analog to California Rule 1.16 and governs the circumstances under which a registered practitioner may or must withdraw from representing a client before the USPTO. The provision parallels the California rule in most material respects, including the requirement that withdrawal be accomplished in a manner that avoids prejudice to the client's interests. In the context of patent prosecution,

V. Intersection of Billing Dispute and Ethical Duties This memorandum would be incomplete without directly addressing the tension that underlies the engagement team's current deliberations: C&H has $56,958.50 in outstanding accounts receivable; the Client's budget constraints prevent authorization of new prosecution work; and continued deadline monitoring and notification requires attorney time and attention that may

VI. Specific Obligations for Each Imminent Deadline The following section sets forth the Firm's specific obligations with respect to each of the five tiers of imminent deadlines identified in Section II.D. For each deadline, I provide an assessment of the urgency, the consequences of inaction, the Firm's communication obligations, and the estimated cost of protective action. A. U.S. App. No. 17/672,204 (Application A

VII. Recommended Protocol Going Forward Based on the foregoing analysis, I recommend that the engagement team implement the following protocol, effective immediately, to ensure that C&H discharges its ethical obligations during the remainder of the dormancy period (or until the engagement is formally concluded through withdrawal or mutual termination). A. Continued Deadline Notification C&H will continue to send writ