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Contract analysis / patent-prosecution-strategy-memorandum.docx
patent-prosecution-strategy-memorandum.docx
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Medium · 1
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I. Executive Summary
I. Executive Summary The purpose of this memorandum is to set forth the comprehensive prosecution strategy for a planned family of twelve (12) related U.S. and international patent applications covering Optiwave Semiconductor Corp.'s ("OWS" or the "Company") next-generation silicon-photonics modulator architecture. This memorandum addresses every aspect of the planned prosecution campaign, including application struc
II. Background
Medium
⚑ Assignment / subcontracting
II. Background A. Company Overview Optiwave Semiconductor Corp. is a Delaware corporation, incorporated on April 12, 2017 (Delaware Secretary of State File No. 7284931; California Secretary of State Entity No. C4195872; Federal Employer Identification Number 83-2947105). The Company is headquartered at 4710 Ridgeview Parkway, Suite 300, Santa Clara, California 95054. OWS is a fabless semiconductor design company spec
III. Application Family Architecture
Standard
⚑ Commercial term
III. Application Family Architecture A. Priority Chain All twelve applications in the planned family ultimately claim priority, directly or indirectly, to U.S. Provisional Application No. 63/297,841, filed January 10, 2022. The provisional establishes the earliest possible priority date for all subject matter disclosed therein, and is the anchor document upon which the entire prosecution strategy depends. Under 35 U.
IV. Claim Differentiation Strategy vis-à-vis Pinnacle Optics Prior Art
IV. Claim Differentiation Strategy vis-à-vis Pinnacle Optics Prior Art A. Overview of Pinnacle's Patent Claims A thorough understanding of Pinnacle Optics' patent claims is essential to crafting OWS's claims in a manner that maximizes scope while maintaining clear differentiation from the prior art. The following summarizes the key independent claims of Pinnacle's two relevant patents. Full claim texts are reproduced
V. Filing Timeline and Milestones
Standard
⚑ Commercial term
V. Filing Timeline and Milestones A. Calendar of Planned Filings The following table sets forth the anticipated filing dates and actions for all twelve applications in the planned family. All dates are targets and are subject to adjustment based on prosecution developments, R&D timelines, and budgetary considerations. B. Critical Statutory Deadlines The following statutory deadlines are of critical importance to the
VI. PCT and International Filing Strategy
VI. PCT and International Filing Strategy A. PCT Strategy OWS's international filing strategy is anchored by two parallel PCT international applications — A4 and A5 — which will be filed concurrently with the foundational U.S. non-provisional (A1) on January 9, 2023. The use of the PCT system provides several strategic advantages, including centralized filing and initial examination, a 30-month window for national-ph