letter-to-nakashima-togawa-hold-notice.docx

1014-00005 · Optiwave Semiconductor Corp · Correspondence/External

letter-to-nakashima-togawa-hold-notice.docx DOCUMENT IP / Technology

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CALDERWOOD & HARKNESS LLP Attorneys at Law 555 California Street, 42nd Floor San Francisco, California 94104 Telephone: (415) 773-6200 Facsimile: (415) 773-6201 www.calderwoodharkness.com

September 20, 2023

Sent via Email and International Courier

Mr. Kenji Nakashima Nakashima & Togawa Patent Professional Corporation 2-4-16 Toranomon, Minato-ku Tokyo 105-0001 Japan

Re: Hold on Examination Request Filings — Japanese National-Phase Applications

Application No. JP 2024-542197 (derived from PCT/US2023/010584) [Sub-Family B4 — Electrode Fabrication Process]

Application No. JP 2024-542305 (derived from PCT/US2023/010612) [Sub-Family C3 — Packaging & Thermal Management]

Client: Optiwave Semiconductor Corp.

Our Matter No.: 1014-00005

Dear Mr. Nakashima:

1. Purpose and Context

Calderwood & Harkness LLP ("C&H") writes on behalf of its client, Optiwave Semiconductor Corp. ("OWS"), a Delaware corporation headquartered at 4710 Ridgeview Parkway, Suite 300, Santa Clara, California 95054, in connection with the two above-referenced Japanese national-phase patent applications currently being handled by Nakashima & Togawa Patent Professional Corporation ("N&T") as foreign associate counsel. We appreciate the diligent work N&T has provided to date with respect to these filings and the broader OWS Japanese patent portfolio, and we write to provide updated prosecution instructions for both applications.

The purpose of this letter is to instruct N&T to place a hold on filing requests for examination with the Japan Patent Office ("JPO") for both JP 2024-542197 and JP 2024-542305 until further written notice is received from C&H or from OWS's in-house patent counsel, as described in greater detail below. No request for examination should be filed for either application unless and until such express written authorization is provided.

This hold is necessitated by budgetary constraints recently imposed on OWS by its majority equity sponsor, Harborview Partners ("Veltrano"). Veltrano has mandated a significant reduction in discretionary intellectual property expenditures across OWS's portfolio, effective August 11, 2023. As a result of this mandate, all non-critical prosecution activity across the OWS patent docket — including both domestic and foreign filings — has been temporarily suspended pending a comprehensive portfolio review and reassessment of prosecution priorities. The decision to defer the filing of examination requests in Japan is part of this broader suspension and does not reflect any determination by OWS or C&H regarding the ultimate value or strategic importance of the underlying inventions. We anticipate that the hold will be temporary in nature, as described further in Section 7 below.

2. Identification of the Applications

For clarity and to ensure that our respective records are aligned, we set forth below the identifying details of each application subject to this hold instruction.

2.1 Application No. JP 2024-542197 (Sub-Family B4)

JP 2024-542197 is a Japanese national-phase application that entered the national phase before the JPO on July 3, 2023. This application is derived from international application No. PCT/US2023/010584, which was filed on January 9, 2023, with the United States Patent and Trademark Office ("USPTO") acting as the Receiving Office under the Patent Cooperation Treaty. The international application, and consequently this national-phase application, claims the benefit of priority to U.S. Provisional Application No. 63/297,841, filed January 10, 2022.

The subject matter of JP 2024-542197 relates to an electrode fabrication process for a multi-channel silicon-photonic Mach-Zehnder modulator incorporating a segmented traveling-wave electrode architecture. This application is designated internally within the OWS portfolio as Sub-Family B4 and forms part of the broader B family of applications directed to electrode design and manufacturing processes for OWS's next-generation optical modulator platform.

The current status of this application is that it has successfully entered the Japanese national phase and is awaiting the filing of a request for examination. No substantive prosecution has yet been undertaken before the JPO.

The named inventors on this application are: Dr. Rajan Menon, Dr. Lena Strickland, Dr. Feng-Yi Chen, and Dr. Arjun Dasgupta.

2.2 Application No. JP 2024-542305 (Sub-Family C3)

JP 2024-542305 is a Japanese national-phase application that entered the national phase before the JPO on July 8, 2023. This application is derived from international application No. PCT/US2023/010612, which was also filed on January 9, 2023, with the USPTO acting as the Receiving Office under the Patent Cooperation Treaty. Like the B4 application described above, this national-phase application claims the benefit of priority to U.S. Provisional Application No. 63/297,841, filed January 10, 2022.

The subject matter of JP 2024-542305 relates to the packaging and thermal management aspects of the silicon-photonic modulator architecture, including thermal dissipation structures, flip-chip bonding configurations, and related methods for maintaining operational stability in high-bandwidth modulator packages. This application is designated internally within the OWS portfolio as Sub-Family C3 and forms part of the broader C family of applications directed to packaging, integration, and thermal management solutions.

The current status of this application is that it has successfully entered the Japanese national phase and is awaiting the filing of a request for examination. As with JP 2024-542197, no substantive prosecution has yet been undertaken before the JPO.

The named inventors on this application are the same as for JP 2024-542197: Dr. Rajan Menon, Dr. Lena Strickland, Dr. Feng-Yi Chen, and Dr. Arjun Dasgupta.

3. Instructions — Hold on Examination Requests

Effective immediately upon receipt of this letter, N&T is instructed as follows:

(a) Examination Requests. N&T shall not file a request for examination (shutsugan shinsa no seikyū) with the JPO for either JP 2024-542197 or JP 2024-542305 until N&T receives express written authorization to proceed from C&H or from OWS's in-house IP counsel, Sandra Koh. Verbal or informal communications should not be construed as authorization to file an examination request. Authorization must be provided in writing, whether by letter, email, or other documented form of correspondence.

(b) Other Substantive Prosecution Actions. No other substantive prosecution actions — including, without limitation, voluntary amendments to the claims or specification, submission of information disclosure materials, filing of divisional or continuation applications, or any other voluntary filing or response — should be taken with respect to either application absent specific prior written authorization from C&H or Sandra Koh at OWS.

(c) Scope of Hold. This instruction applies broadly to any discretionary filing or action that would incur professional fees or official fees beyond those associated with the routine maintenance of the applications in pending status before the JPO. The hold is intended to suspend all elective prosecution activity while preserving the applications in a posture from which prosecution can be resumed when the hold is lifted.

We recognize that this instruction places an affirmative obligation on N&T to refrain from actions that might otherwise be taken in the ordinary course of patent prosecution. We ask that N&T update its internal case management and docketing systems to reflect this hold status prominently, so that no inadvertent action is taken during the hold period.

4. Statutory Deadline Confirmation — Examination Request

Under Article 48-3 of the Japanese Patent Law (Tokkyo-hō), the deadline for filing a request for examination is three (3) years from the international filing date of the PCT application from which each national-phase application derives. If a request for examination is not filed within this three-year period, the application is deemed to have been withdrawn.

Both underlying PCT applications — PCT/US2023/010584 and PCT/US2023/010612 — were filed on January 9, 2023. Accordingly, based on our calculation, the three-year statutory deadline for filing a request for examination for both JP 2024-542197 (B4) and JP 2024-542305 (C3) is January 9, 2026.

We respectfully request that N&T independently confirm this deadline calculation and advise C&H if N&T's calculation differs in any respect. We further request that N&T maintain this deadline prominently on its internal docket for both applications.

In addition, we request that N&T provide C&H with advance reminder notifications regarding the approaching examination request deadline in accordance with the following schedule:

(i) Six-Month Reminder. N&T shall provide C&H and OWS with a written reminder notification no later than six (6) months prior to the examination request deadline — that is, by approximately July 9, 2025 — to allow sufficient lead time for OWS to make a determination on whether to proceed with examination or to allow one or both of the applications to lapse.

(ii) Three-Month Reminder. N&T shall provide C&H and OWS with a second written reminder notification no later than three (3) months prior to the examination request deadline — that is, by approximately October 9, 2025 — to serve as a final reminder and to ensure that any decision to proceed with examination can be implemented before the statutory deadline expires.

These reminder notifications should be sent to both the primary and secondary contacts identified in Section 6 below, as well as to Sandra Koh at OWS.

We understand that the January 9, 2026 deadline provides substantial runway, and we do not anticipate that the current hold will extend to a point at which the deadline is placed at risk. Nevertheless, given the absolute and non-extendable nature of the examination request deadline under Japanese law, we believe it is prudent to establish this reminder protocol to safeguard against any inadvertent loss of rights.

5. Ongoing Monitoring and Communication Obligations

While the hold on examination request filings is in effect, N&T should continue to monitor both JP 2024-542197 and JP 2024-542305 for any communications, notifications, or official actions issued by the JPO. We understand that, in the ordinary course, applications awaiting examination requests typically do not generate significant JPO correspondence; however, we wish to ensure that nothing is overlooked during the hold period.

If any official communication, requirement, office action, or deadline notice is issued by the JPO for either application during the hold period — whether anticipated or unanticipated — N&T must immediately notify C&H. Such notifications should be directed to the attention of Peter Vassiliev, Working Associate, intellectual Property Group, Calderwood & Harkness LLP (USPTO Reg. No. 79,514), with a copy to Sandra Koh, IP Manager and In-House Patent Counsel, Optiwave Semiconductor Corp. We ask that any such notifications be accompanied by an English-language summary of the JPO communication and, where applicable, an identification of any response deadline or required action.

N&T should continue to maintain both applications in good standing before the JPO throughout the hold period. To the extent that any annuities, maintenance fees, or other mandatory governmental fees come due during the hold period, N&T should advise C&H and OWS of the upcoming fee obligation with sufficient advance notice — preferably no less than thirty (30) days prior to the payment deadline — so that authorization for payment can be obtained and funds remitted in a timely manner. Upon receiving authorization, N&T should proceed with payment and provide C&H with confirmation of the same.

For the avoidance of doubt, the hold instruction set forth in Section 3 above applies specifically to the discretionary filing of examination requests and to other elective prosecution actions. The hold does not extend to any mandatory action that is necessary to preserve the pendency or validity of the applications before the JPO. If N&T identifies any action that must be taken on a mandatory basis to avoid loss of rights, N&T should immediately contact C&H for authorization to proceed, and C&H will endeavor to provide a prompt response.

6. Contact Information During the Hold Period

All communications from N&T regarding JP 2024-542197 and JP 2024-542305 during the hold period should be directed to the following individuals:

Primary Contact at C&H:

Peter Vassiliev Working Associate, intellectual Property Group Calderwood & Harkness LLP 555 California Street, 42nd Floor San Francisco, California 94104

Email: p.vassiliev@calderwoodharkness.com

Direct Telephone: (415) 773-6247

Secondary Contact at C&H:

Christy Bauer Lead Associate, intellectual Property Group Calderwood & Harkness LLP 555 California Street, 42nd Floor San Francisco, California 94104 USPTO Registration No. 74,329

Email: c.bauer@calderwoodharkness.com

Client Contact:

Sandra Koh IP Manager / In-House Patent Counsel Optiwave Semiconductor Corp. 4710 Ridgeview Parkway, Suite 300 Santa Clara, California 95054

Email: s.koh@optiwavesemi.com

All substantive communications regarding these applications — including, without limitation, notifications of JPO correspondence, fee reminders, deadline notices, and status updates — should be copied to both Peter Vassiliev at C&H and Sandra Koh at OWS. In the event that Mr. Vassiliev is unavailable, communications may be directed to Christy Bauer as the designated alternate contact.

7. Anticipated Timeline for Resolution

OWS currently anticipates that the budgetary constraints imposed by Veltrano Capital Partners will be reviewed by its equity sponsor as part of Veltrano's regularly scheduled portfolio assessment process, which OWS understands is expected to take place in the first half of 2024. While OWS cannot provide a definitive date at this time for the lifting of the hold, C&H expects to be in a position to provide N&T with updated instructions regarding the examination request filings well in advance of the January 9, 2026 statutory deadline.

C&H will notify N&T promptly once the hold is lifted and prosecution activity may resume. At that time, C&H will provide specific instructions regarding whether to proceed with filing examination requests for one or both of the applications, along with any additional prosecution guidance that may be warranted in light of developments in the corresponding U.S. and other foreign proceedings.

In the interim, C&H appreciates N&T's patience, professionalism, and continued diligence in monitoring these applications. We value the collaborative working relationship between our firms and thank N&T for its flexibility in accommodating these revised instructions.

8. Confirmation Request

We respectfully request that N&T provide the following confirmations in writing at its earliest convenience:

(a) Confirmation of receipt of this letter and acknowledgment of the hold instructions contained herein, including the specific instructions set forth in Section 3;

(b) Written confirmation that N&T's independent calculation of the statutory deadline for filing a request for examination for both JP 2024-542197 and JP 2024-542305 is January 9, 2026, or, if N&T's calculation differs, an explanation of the basis for any discrepancy;

(c) Confirmation that N&T's internal docketing system has been updated to reflect the hold status for both applications and that the reminder notification schedule described in Section 4 (six-month and three-month advance reminders) has been docketed accordingly; and

(d) Confirmation of N&T's understanding and acceptance of the ongoing monitoring and communication obligations described in Section 5 above.

We would appreciate receiving these confirmations within ten (10) business days of N&T's receipt of this letter. Please direct your response to Peter Vassiliev at the email address provided in Section 6.

9. Fees and Billing

Any fees or costs incurred by N&T in connection with the routine monitoring and maintenance of JP 2024-542197 and JP 2024-542305 during the hold period — including professional fees for docket monitoring, any mandatory government fees or annuities, and associated disbursements — should be invoiced to C&H at the following address:

Calderwood & Harkness LLP

Attn: Accounts Payable — IP Billing

555 California Street, 42nd Floor San Francisco, California 94104

All invoices should reference C&H Matter No. 1014-00005 and should clearly identify the application number(s) to which the charges relate. Invoices may also be submitted electronically to our billing department at ipbilling@calderwoodharkness.com.

No fees for substantive prosecution work — including, without limitation, preparation of examination requests, claim amendments, responses to office actions, or other elective filings — should be incurred by N&T without prior written authorization from C&H. In the event that mandatory filings or fee payments arise that require immediate attention, N&T should contact C&H promptly for authorization, as described in Section 5, and C&H will endeavor to respond within two (2) business days.

We thank N&T for its continued cooperation, responsiveness, and careful attention to these matters. Should you have any questions regarding the instructions set forth in this letter, or if you require any additional information or clarification, please do not hesitate to contact me directly at the telephone number or email address provided above. We look forward to your confirmation and to continuing our productive working relationship.

Very truly yours,

CALDERWOOD & HARKNESS LLP

By: ________

Peter Vassiliev Working Associate, intellectual Property Group USPTO Registration No. 79,514

cc: Catherine Bloom, Responsible Partner, Calderwood & Harkness LLP cc: Christy Bauer, Lead Associate, Calderwood & Harkness LLP cc: Sandra Koh, IP Manager, Optiwave Semiconductor Corp. cc: Lisa Cheng, Account Manager, Trident intellectual Property Services, LLC (for docketing coordination)

CALDERWOOD & HARKNESS LLP Attorneys at Law 555 California Street, 42nd Floor San Francisco, California 94104 Telephone: (415) 773-6200 Facsimile: (415) 773-6201 www.calderwoodharkness.com
September 20, 2023
Sent via Email and International Courier
Mr. Kenji Nakashima Nakashima & Togawa Patent Professional Corporation 2-4-16 Toranomon, Minato-ku Tokyo 105-0001 Japan
Re: Hold on Examination Request Filings — Japanese National-Phase Applications
Application No. JP 2024-542197 (derived from PCT/US2023/010584) [Sub-Family B4 — Electrode Fabrication Process]
Application No. JP 2024-542305 (derived from PCT/US2023/010612) [Sub-Family C3 — Packaging & Thermal Management]
Client: Optiwave Semiconductor Corp.
Our Matter No.: 1014-00005
Dear Mr. Nakashima:
1. Purpose and Context
Calderwood & Harkness LLP ("C&H") writes on behalf of its client, Optiwave Semiconductor Corp. ("OWS"), a Delaware corporation headquartered at 4710 Ridgeview Parkway, Suite 300, Santa Clara, California 95054, in connection with the two above-referenced Japanese national-phase patent applications currently being handled by Nakashima & Togawa Patent Professional Corporation ("N&T") as foreign associate counsel. We appreciate the diligent work N&T has provided to date with respect to these filings and the broader OWS Japanese patent portfolio, and we write to provide updated prosecution instructions for both applications.
The purpose of this letter is to instruct N&T to place a hold on filing requests for examination with the Japan Patent Office ("JPO") for both JP 2024-542197 and JP 2024-542305 until further written notice is received from C&H or from OWS's in-house patent counsel, as described in greater detail below. No request for examination should be filed for either application unless and until such express written authorization is provided.
This hold is necessitated by budgetary constraints recently imposed on OWS by its majority equity sponsor, Harborview Partners ("Veltrano"). Veltrano has mandated a significant reduction in discretionary intellectual property expenditures across OWS's portfolio, effective August 11, 2023. As a result of this mandate, all non-critical prosecution activity across the OWS patent docket — including both domestic and foreign filings — has been temporarily suspended pending a comprehensive portfolio review and reassessment of prosecution priorities. The decision to defer the filing of examination requests in Japan is part of this broader suspension and does not reflect any determination by OWS or C&H regarding the ultimate value or strategic importance of the underlying inventions. We anticipate that the hold will be temporary in nature, as described further in Section 7 below.
2. Identification of the Applications
For clarity and to ensure that our respective records are aligned, we set forth below the identifying details of each application subject to this hold instruction.
2.1 Application No. JP 2024-542197 (Sub-Family B4)
JP 2024-542197 is a Japanese national-phase application that entered the national phase before the JPO on July 3, 2023. This application is derived from international application No. PCT/US2023/010584, which was filed on January 9, 2023, with the United States Patent and Trademark Office ("USPTO") acting as the Receiving Office under the Patent Cooperation Treaty. The international application, and consequently this national-phase application, claims the benefit of priority to U.S. Provisional Application No. 63/297,841, filed January 10, 2022.
The subject matter of JP 2024-542197 relates to an electrode fabrication process for a multi-channel silicon-photonic Mach-Zehnder modulator incorporating a segmented traveling-wave electrode architecture. This application is designated internally within the OWS portfolio as Sub-Family B4 and forms part of the broader B family of applications directed to electrode design and manufacturing processes for OWS's next-generation optical modulator platform.
The current status of this application is that it has successfully entered the Japanese national phase and is awaiting the filing of a request for examination. No substantive prosecution has yet been undertaken before the JPO.
The named inventors on this application are: Dr. Rajan Menon, Dr. Lena Strickland, Dr. Feng-Yi Chen, and Dr. Arjun Dasgupta.
2.2 Application No. JP 2024-542305 (Sub-Family C3)
JP 2024-542305 is a Japanese national-phase application that entered the national phase before the JPO on July 8, 2023. This application is derived from international application No. PCT/US2023/010612, which was also filed on January 9, 2023, with the USPTO acting as the Receiving Office under the Patent Cooperation Treaty. Like the B4 application described above, this national-phase application claims the benefit of priority to U.S. Provisional Application No. 63/297,841, filed January 10, 2022.
The subject matter of JP 2024-542305 relates to the packaging and thermal management aspects of the silicon-photonic modulator architecture, including thermal dissipation structures, flip-chip bonding configurations, and related methods for maintaining operational stability in high-bandwidth modulator packages. This application is designated internally within the OWS portfolio as Sub-Family C3 and forms part of the broader C family of applications directed to packaging, integration, and thermal management solutions.
The current status of this application is that it has successfully entered the Japanese national phase and is awaiting the filing of a request for examination. As with JP 2024-542197, no substantive prosecution has yet been undertaken before the JPO.
The named inventors on this application are the same as for JP 2024-542197: Dr. Rajan Menon, Dr. Lena Strickland, Dr. Feng-Yi Chen, and Dr. Arjun Dasgupta.
3. Instructions — Hold on Examination Requests
Effective immediately upon receipt of this letter, N&T is instructed as follows:
(a) Examination Requests. N&T shall not file a request for examination (shutsugan shinsa no seikyū) with the JPO for either JP 2024-542197 or JP 2024-542305 until N&T receives express written authorization to proceed from C&H or from OWS's in-house IP counsel, Sandra Koh. Verbal or informal communications should not be construed as authorization to file an examination request. Authorization must be provided in writing, whether by letter, email, or other documented form of correspondence.
(b) Other Substantive Prosecution Actions. No other substantive prosecution actions — including, without limitation, voluntary amendments to the claims or specification, submission of information disclosure materials, filing of divisional or continuation applications, or any other voluntary filing or response — should be taken with respect to either application absent specific prior written authorization from C&H or Sandra Koh at OWS.
(c) Scope of Hold. This instruction applies broadly to any discretionary filing or action that would incur professional fees or official fees beyond those associated with the routine maintenance of the applications in pending status before the JPO. The hold is intended to suspend all elective prosecution activity while preserving the applications in a posture from which prosecution can be resumed when the hold is lifted.
We recognize that this instruction places an affirmative obligation on N&T to refrain from actions that might otherwise be taken in the ordinary course of patent prosecution. We ask that N&T update its internal case management and docketing systems to reflect this hold status prominently, so that no inadvertent action is taken during the hold period.
4. Statutory Deadline Confirmation — Examination Request
Under Article 48-3 of the Japanese Patent Law (Tokkyo-hō), the deadline for filing a request for examination is three (3) years from the international filing date of the PCT application from which each national-phase application derives. If a request for examination is not filed within this three-year period, the application is deemed to have been withdrawn.
Both underlying PCT applications — PCT/US2023/010584 and PCT/US2023/010612 — were filed on January 9, 2023. Accordingly, based on our calculation, the three-year statutory deadline for filing a request for examination for both JP 2024-542197 (B4) and JP 2024-542305 (C3) is January 9, 2026.
We respectfully request that N&T independently confirm this deadline calculation and advise C&H if N&T's calculation differs in any respect. We further request that N&T maintain this deadline prominently on its internal docket for both applications.
In addition, we request that N&T provide C&H with advance reminder notifications regarding the approaching examination request deadline in accordance with the following schedule:
(i) Six-Month Reminder. N&T shall provide C&H and OWS with a written reminder notification no later than six (6) months prior to the examination request deadline — that is, by approximately July 9, 2025 — to allow sufficient lead time for OWS to make a determination on whether to proceed with examination or to allow one or both of the applications to lapse.
(ii) Three-Month Reminder. N&T shall provide C&H and OWS with a second written reminder notification no later than three (3) months prior to the examination request deadline — that is, by approximately October 9, 2025 — to serve as a final reminder and to ensure that any decision to proceed with examination can be implemented before the statutory deadline expires.
These reminder notifications should be sent to both the primary and secondary contacts identified in Section 6 below, as well as to Sandra Koh at OWS.
We understand that the January 9, 2026 deadline provides substantial runway, and we do not anticipate that the current hold will extend to a point at which the deadline is placed at risk. Nevertheless, given the absolute and non-extendable nature of the examination request deadline under Japanese law, we believe it is prudent to establish this reminder protocol to safeguard against any inadvertent loss of rights.
5. Ongoing Monitoring and Communication Obligations
While the hold on examination request filings is in effect, N&T should continue to monitor both JP 2024-542197 and JP 2024-542305 for any communications, notifications, or official actions issued by the JPO. We understand that, in the ordinary course, applications awaiting examination requests typically do not generate significant JPO correspondence; however, we wish to ensure that nothing is overlooked during the hold period.
If any official communication, requirement, office action, or deadline notice is issued by the JPO for either application during the hold period — whether anticipated or unanticipated — N&T must immediately notify C&H. Such notifications should be directed to the attention of Peter Vassiliev, Working Associate, intellectual Property Group, Calderwood & Harkness LLP (USPTO Reg. No. 79,514), with a copy to Sandra Koh, IP Manager and In-House Patent Counsel, Optiwave Semiconductor Corp. We ask that any such notifications be accompanied by an English-language summary of the JPO communication and, where applicable, an identification of any response deadline or required action.
N&T should continue to maintain both applications in good standing before the JPO throughout the hold period. To the extent that any annuities, maintenance fees, or other mandatory governmental fees come due during the hold period, N&T should advise C&H and OWS of the upcoming fee obligation with sufficient advance notice — preferably no less than thirty (30) days prior to the payment deadline — so that authorization for payment can be obtained and funds remitted in a timely manner. Upon receiving authorization, N&T should proceed with payment and provide C&H with confirmation of the same.
For the avoidance of doubt, the hold instruction set forth in Section 3 above applies specifically to the discretionary filing of examination requests and to other elective prosecution actions. The hold does not extend to any mandatory action that is necessary to preserve the pendency or validity of the applications before the JPO. If N&T identifies any action that must be taken on a mandatory basis to avoid loss of rights, N&T should immediately contact C&H for authorization to proceed, and C&H will endeavor to provide a prompt response.
6. Contact Information During the Hold Period
All communications from N&T regarding JP 2024-542197 and JP 2024-542305 during the hold period should be directed to the following individuals:
Primary Contact at C&H:
Peter Vassiliev Working Associate, intellectual Property Group Calderwood & Harkness LLP 555 California Street, 42nd Floor San Francisco, California 94104
Email: p.vassiliev@calderwoodharkness.com
Direct Telephone: (415) 773-6247
Secondary Contact at C&H:
Christy Bauer Lead Associate, intellectual Property Group Calderwood & Harkness LLP 555 California Street, 42nd Floor San Francisco, California 94104 USPTO Registration No. 74,329
Email: c.bauer@calderwoodharkness.com
Client Contact:
Sandra Koh IP Manager / In-House Patent Counsel Optiwave Semiconductor Corp. 4710 Ridgeview Parkway, Suite 300 Santa Clara, California 95054
Email: s.koh@optiwavesemi.com
All substantive communications regarding these applications — including, without limitation, notifications of JPO correspondence, fee reminders, deadline notices, and status updates — should be copied to both Peter Vassiliev at C&H and Sandra Koh at OWS. In the event that Mr. Vassiliev is unavailable, communications may be directed to Christy Bauer as the designated alternate contact.
7. Anticipated Timeline for Resolution
OWS currently anticipates that the budgetary constraints imposed by Veltrano Capital Partners will be reviewed by its equity sponsor as part of Veltrano's regularly scheduled portfolio assessment process, which OWS understands is expected to take place in the first half of 2024. While OWS cannot provide a definitive date at this time for the lifting of the hold, C&H expects to be in a position to provide N&T with updated instructions regarding the examination request filings well in advance of the January 9, 2026 statutory deadline.
C&H will notify N&T promptly once the hold is lifted and prosecution activity may resume. At that time, C&H will provide specific instructions regarding whether to proceed with filing examination requests for one or both of the applications, along with any additional prosecution guidance that may be warranted in light of developments in the corresponding U.S. and other foreign proceedings.
In the interim, C&H appreciates N&T's patience, professionalism, and continued diligence in monitoring these applications. We value the collaborative working relationship between our firms and thank N&T for its flexibility in accommodating these revised instructions.
8. Confirmation Request
We respectfully request that N&T provide the following confirmations in writing at its earliest convenience:
(a) Confirmation of receipt of this letter and acknowledgment of the hold instructions contained herein, including the specific instructions set forth in Section 3;
(b) Written confirmation that N&T's independent calculation of the statutory deadline for filing a request for examination for both JP 2024-542197 and JP 2024-542305 is January 9, 2026, or, if N&T's calculation differs, an explanation of the basis for any discrepancy;
(c) Confirmation that N&T's internal docketing system has been updated to reflect the hold status for both applications and that the reminder notification schedule described in Section 4 (six-month and three-month advance reminders) has been docketed accordingly; and
(d) Confirmation of N&T's understanding and acceptance of the ongoing monitoring and communication obligations described in Section 5 above.
We would appreciate receiving these confirmations within ten (10) business days of N&T's receipt of this letter. Please direct your response to Peter Vassiliev at the email address provided in Section 6.
9. Fees and Billing
Any fees or costs incurred by N&T in connection with the routine monitoring and maintenance of JP 2024-542197 and JP 2024-542305 during the hold period — including professional fees for docket monitoring, any mandatory government fees or annuities, and associated disbursements — should be invoiced to C&H at the following address:
Calderwood & Harkness LLP
Attn: Accounts Payable — IP Billing
555 California Street, 42nd Floor San Francisco, California 94104
All invoices should reference C&H Matter No. 1014-00005 and should clearly identify the application number(s) to which the charges relate. Invoices may also be submitted electronically to our billing department at ipbilling@calderwoodharkness.com.
No fees for substantive prosecution work — including, without limitation, preparation of examination requests, claim amendments, responses to office actions, or other elective filings — should be incurred by N&T without prior written authorization from C&H. In the event that mandatory filings or fee payments arise that require immediate attention, N&T should contact C&H promptly for authorization, as described in Section 5, and C&H will endeavor to respond within two (2) business days.
We thank N&T for its continued cooperation, responsiveness, and careful attention to these matters. Should you have any questions regarding the instructions set forth in this letter, or if you require any additional information or clarification, please do not hesitate to contact me directly at the telephone number or email address provided above. We look forward to your confirmation and to continuing our productive working relationship.
Very truly yours,
CALDERWOOD & HARKNESS LLP
By: ________
Peter Vassiliev Working Associate, intellectual Property Group USPTO Registration No. 79,514
cc: Catherine Bloom, Responsible Partner, Calderwood & Harkness LLP cc: Christy Bauer, Lead Associate, Calderwood & Harkness LLP cc: Sandra Koh, IP Manager, Optiwave Semiconductor Corp. cc: Lisa Cheng, Account Manager, Trident intellectual Property Services, LLC (for docketing coordination)

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