1014-00005 · Optiwave Semiconductor Corp · Correspondence/External

letter-to-trident-ips-docket-hold.docx DOCUMENT IP / Technology

7 / 35 ← → ✕

CONFIDENTIAL

CALDERWOOD & HARKNESS LLP Attorneys at Law

555 California Street, 42nd Floor San Francisco, California 94104 Telephone: (415) 392-7800 Facsimile: (415) 392-7801 www.calderwoodharkness.com

September 12, 2023

VIA EMAIL AND FIRST-CLASS MAIL

Lisa Cheng, Account Manager Trident intellectual Property Services, LLC 9800 Northwest Freeway, Suite 420 Houston, TX 77092

Re: Optiwave Semiconductor Corp. — Docket Hold Instructions C&H Matter No. 1014-00005 Client: Optiwave Semiconductor Corp. ("OWS")

Dear Ms. Cheng:

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 IPS" or "Trident").

Due to a client-directed budget constraint that became effective on August 11, 2023, OWS has instructed C&H to place the active prosecution docket in a hold/dormant status until further notice. This decision reflects OWS's internal capital allocation priorities and is not related to the merits or strategic value of any individual application. However, we must ensure that the hold is implemented uniformly and without exception across the portfolio, and that no patent rights are inadvertently lost or compromised during this period.

Accordingly, effective immediately, all non-critical filings — including without limitation voluntary amendments, information disclosure statements ("IDS" filings), examination requests, requests for continued examination, preliminary amendments, and similar discretionary actions — are to be held and are not to be filed without express written authorization from C&H. The specific parameters of this hold, the applications to which it applies, and the continuing obligations that remain in effect notwithstanding the hold are described in detail below.

We ask that you review these instructions carefully and confirm your receipt and understanding as set forth in Section 11 of this letter.

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 U.S. Provisional Application No. 63/297,841, which was filed on January 10, 2022, and which expired on January 10, 2023. The named inventors common to most of these applications are Dr. Rajan Menon, Dr. Lena Strickland, Dr. Feng-Yi Chen, and Dr. Arjun Dasgupta.

Sub-Family A — Core Modulator Architecture

The Core Modulator Architecture sub-family comprises five applications directed to OWS's silicon-photonic modulator platform:

A1: U.S. Application No. 17/672,204 — Non-Provisional application filed January 9, 2023, before the United States Patent and Trademark Office ("USPTO").

A2: U.S. Application No. 17/672,311 — Continuation application filed March 15, 2023, before the USPTO. This application is a continuation of A1 and claims priority through A1 to U.S. Provisional Application No. 63/297,841.

A3: U.S. Application No. 17/672,489 — Continuation-in-Part application filed June 22, 2023, before the USPTO. This application is a continuation-in-part of A1 and contains additional subject matter relating to advanced modulation architectures not disclosed in the provisional or the parent non-provisional.

A4: PCT/US2023/010584 — PCT International application filed January 9, 2023, with the World intellectual Property Organization ("WIPO"), designating the USPTO as the Receiving Office ("USPTO RO").

A5: PCT/US2023/010612 — PCT International application filed January 9, 2023, with WIPO, designating the USPTO RO.

Sub-Family B — Electrode Fabrication Process

The Electrode Fabrication Process sub-family comprises four applications directed to OWS's proprietary electrode deposition and patterning methods:

B1: U.S. Application No. 17/814,057 — Non-Provisional application filed July 21, 2023, before the USPTO.

B2: U.S. Application No. 17/814,103 — Divisional application of B1, filed July 21, 2023, before the USPTO. Please note that this application is currently a placeholder in the docketing system and has not yet been formally filed with the USPTO. It should remain in the docket as a placeholder entry, and its filing is subject to the hold described herein. No filing action should be taken on B2 without prior written authorization from C&H.

B3: EP 23 741 682.3 — European regional phase application, entered from A4 PCT (PCT/US2023/010584) on July 5, 2023, before the European Patent Office ("EPO").

B4: JP 2024-542197 — Japanese national phase application, entered from A4 PCT (PCT/US2023/010584) on July 3, 2023, before the Japan Patent Office ("JPO").

Sub-Family C — Packaging & Thermal Management

The Packaging & Thermal Management sub-family comprises three applications directed to OWS's advanced chip-packaging and thermal dissipation technologies:

C1: U.S. Application No. 18/102,776 — Non-Provisional application, with a projected filing date of January 29, 2024, before the USPTO. Please note that this application was authorized under the pre-freeze budget and may be filed during the hold period if it has not yet been filed at the time you receive this letter. If C1 is already entered in Trident's tracking system, the hold instructions herein apply to it. If it is not yet in Trident's system, it will be added upon filing by C&H, at which point the hold will apply unless otherwise instructed.

C2: EP 23 765 901.7 — European regional phase application, entered from A5 PCT (PCT/US2023/010612) on July 8, 2023, before the EPO.

C3: JP 2024-542305 — Japanese national phase application, entered from A5 PCT (PCT/US2023/010612) on July 8, 2023, before the JPO.

For ease of reference, we have summarized the foregoing applications in the table below:

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 to preserve OWS's rights in these applications. It is essential that no deadline be missed, overlooked, or inadequately tracked during the hold period, as a missed deadline could result in the permanent and irrevocable loss of patent rights.

The deadlines that Trident must continue to monitor include, but are not limited to, the following:

(a) USPTO Office Action Response Deadlines. This includes all response deadlines arising from non-final Office Actions, final Office Actions, restriction requirements, and other USPTO communications. Both the shortened statutory period (typically three months from mailing) and the maximum six-month statutory deadline under 35 U.S.C. § 133 must be tracked, along with the availability and cost of extensions of time under 37 C.F.R. § 1.136(a).

(b) PCT National-Phase Entry Deadlines. The 30-month deadline from the January 10, 2022 priority date for national-phase entry into designated jurisdictions from A4 (PCT/US2023/010584) and A5 (PCT/US2023/010612) falls on approximately July 9, 2025 (calculated as 30 months from January 10, 2022, adjusted as necessary for weekend or holiday closures in the relevant receiving offices). While regional phase entry has already been completed in the EP and JP for both PCT applications, OWS may wish to enter additional jurisdictions (e.g., China, South Korea, India, or others) prior to the expiration of that deadline, and the option to do so must be preserved through continued tracking.

(c) EPO Response Deadlines. This includes deadlines for responses to extended European search reports ("EESR") issued under EPC Rule 62, as well as deadlines arising under EPC Rules 70a (invitation to respond to EESR), 161 (observations following international preliminary examination), and 162 (amendment opportunities upon entry into the European phase). Designation and renewal fees, and any applicable Rule 71(3) communications, must also be tracked.

(d) JPO Examination Request Deadlines. Under Japanese patent law, a request for examination must be filed within three (3) years from the international filing date for national-phase applications derived from PCT filings. For B4 (JP 2024-542197, derived from A4 filed January 9, 2023), the examination request deadline is January 9, 2026. For C3 (JP 2024-542305, derived from A5 filed January 9, 2023), the examination request deadline is also January 9, 2026. These are absolute deadlines and failure to request examination will result in the deemed withdrawal of the applications.

(e) Maintenance and Annuity Fee Due Dates. Maintenance and annuity fees for any issued patents in the broader OWS portfolio already under Trident management must continue to be tracked and paid in accordance with existing standing instructions. This includes U.S. maintenance fees (due at 3.5, 7.5, and 11.5 years after issuance), EPO annual renewal fees, and JPO annuity fees, as applicable.

(f) Any Other Absolute or Extendable Deadlines. This catch-all category includes any deadline arising from patent office actions, communications, formalities requirements, priority claims, or statutory obligations in any jurisdiction, whether absolute (non-extendable) or subject to extension upon payment of a fee or other action. Trident is to err on the side of over-inclusion in identifying and tracking deadlines.

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) calendar days in advance of the deadline date. This initial alert is intended to provide C&H and the client with sufficient lead time to evaluate whether affirmative action should be authorized and, if so, to prepare the necessary filings or instructions.

(ii) Second Alert — Forty-Five (45) Days. A second reminder alert should be sent no fewer than forty-five (45) calendar days before each deadline. This second alert serves as a follow-up to confirm that the deadline has been noted and that a decision regarding action is in progress.

(iii) Final Alert — Fourteen (14) Days. A final urgent alert should be sent no fewer than fourteen (14) calendar days before any deadline. This alert should be clearly marked as "URGENT — FINAL DEADLINE NOTICE" in the subject line and body of the communication to ensure immediate attention.

All alerts should be directed to the following individuals at C&H:

• Christy Bauer, Lead Associate — Primary contact for all prosecution matters and the first point of contact for deadline-related decisions. Ms. Bauer's contact information is provided in Section 10 below.

• Peter Vassiliev, Working Associate — Backup contact, with particular responsibility for international filings (EPO and JPO matters). Mr. Vassiliev's contact information is provided in Section 10 below.

• Catherine Bloom, Responsible Partner — To be copied on all alerts without exception. Ms. Bloom's contact information is provided in Section 10 below.

Alerts should be sent via email to the email addresses specified in Section 10, with a confirming copy transmitted through Trident's standard docketing-system alert mechanism (i.e., the automated alert functionality within the Trident IP Management Platform, if applicable). We request that email alerts not be sent from unmonitored or "no-reply" addresses; rather, they should originate from an email address that is monitored by your team so that any responses or inquiries from C&H are received and addressed promptly.

Each alert must clearly identify the following information:

(a) The specific application number (both the C&H reference number, e.g., "A1," and the official application number, e.g., "U.S. 17/672,204");

(b) The relevant jurisdiction (USPTO, EPO, JPO, WIPO, or other);

(c) The nature of the deadline (e.g., "Response to Non-Final Office Action," "National-Phase Entry Deadline," "JPO Examination Request Deadline," "EPO Annuity Fee," etc.);

(d) The exact deadline date, expressed in both the local date of the relevant patent office and the corresponding U.S. Pacific Time date if different; and

(e) Whether the deadline is absolute (non-extendable) or subject to extension, and if extendable, the applicable extension mechanism and cost (e.g., "Extendable by up to 3 additional months under 37 C.F.R. § 1.136(a) upon payment of extension fees").

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 (A1) — Non-Final Office Action Response. A non-final Office Action was issued by the USPTO for this application, and a two-month extension of time was filed on September 6, 2023, with the associated extension fee of $640.00 having been paid. The six-month maximum statutory response period under 35 U.S.C. § 133 runs to approximately March 9, 2025. No further extensions of time will be available beyond the remaining statutory period, meaning that the March 9, 2025 date (or the precise date as calculated under USPTO rules) will constitute an absolute, non-extendable bar. Failure to file a response by that date will result in the abandonment of the application. This deadline must be prominently flagged in Trident's system, and the 90-day, 45-day, and 14-day alerts should be treated as the highest priority.

(b) EP 23 741 682.3 (B3) — Extended European Search Report. An extended European search report ("EESR") is anticipated for this application. Upon issuance of the EESR, a six-month response deadline will apply under EPO rules (specifically, EPC Rule 70a in conjunction with Rule 62). Because the issuance date of the EESR is not yet known, Trident should immediately notify C&H upon receipt of the EESR or any related communication from the EPO, and the six-month response deadline should be calculated and docketed promptly upon receipt.

(c) PCT/US2023/010584 (A4) and PCT/US2023/010612 (A5) — National-Phase Entry Deadline. The 30-month national-phase entry deadline for both PCT applications is July 9, 2025 (calculated as 30 months from the January 10, 2022 priority date). While regional phase entry has already been completed for EP and JP, the client may wish to enter additional jurisdictions (including but not limited to China, South Korea, India, Canada, Australia, or others) before the expiration of this deadline. This deadline is absolute and cannot be extended in most jurisdictions. Trident must ensure that this deadline is continuously tracked and that C&H is alerted well in advance so that the client can make informed decisions about additional national-phase entries.

(d) JP 2024-542197 (B4) and JP 2024-542305 (C3) — JPO Examination Request Deadline. The deadline for filing a request for examination at the JPO for both B4 and C3 is January 9, 2026 (three years from the January 9, 2023 international filing date). This deadline is absolute under Japanese patent law, and failure to file an examination request by this date will result in the deemed withdrawal of the respective applications. Given that this deadline falls during the anticipated hold period, it is imperative that Trident track it closely and that C&H receive timely alerts to enable the client to authorize the filing of examination requests if it elects to do so.

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 managed by Trident is to continue without interruption under existing standing instructions. The hold described in this letter pertains exclusively to pending applications and does not affect the maintenance of issued patents. If any question arises regarding the scope of Trident's maintenance fee payment obligations, please contact Christy Bauer for clarification.

(b) Receipt, Logging, and Forwarding of Patent Office Communications. Trident must continue to receive, log into its docketing system, and forward to C&H all patent office communications received for any OWS application. This includes, without limitation, Office Actions, search reports (including the anticipated EESR for B3), notifications, formalities deficiency notices, requests for information, and any other correspondence from the USPTO, EPO, JPO, WIPO, or any other patent office. All such communications must be promptly forwarded to C&H within two (2) business days of receipt by Trident, using the contact information specified in Section 10 below.

(c) Routine Docketing Updates. Trident should continue to make routine docketing updates reflecting newly received correspondence, changed deadlines, updated status information, or other developments in the OWS portfolio. The hold applies to outbound filings and substantive prosecution actions, not to internal record-keeping and docket management.

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 examination (including JPO examination requests);

• Requests for continued examination ("RCE") under 37 C.F.R. § 1.114;

• Voluntary amendments or preliminary amendments;

• Information Disclosure Statements ("IDS");

• National-phase entry filings;

• Declarations, oaths, or inventor's certificates;

• Petitions (including petitions for revival, petitions to make special, or petitions for prioritized examination);

• Any other substantive or procedural filing with any patent office in any jurisdiction.

This instruction supersedes any prior standing instructions that may have authorized routine filings, automatic responses, or other discretionary actions on OWS applications. To the extent that Trident's docketing system or standard operating procedures contemplate automatic or semi-automatic filings (such as auto-pay of certain fees or auto-filing of certain formalities responses), such automated processes must be disabled for all OWS applications for the duration of the hold, except for the annuity and maintenance fee payments described in Section 6(a) above.

Written authorization from C&H must be received before any filing is made. Oral or informal communications do not constitute authorization for purposes of this instruction. Authorization will be provided via email from Christy Bauer (cbauer@calderwoodharkness.com) or Catherine Bloom (cbloom@calderwoodharkness.com) and will reference the specific application number and the specific filing to be made.

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 parallel hold instructions to N&T.

• Breitenfeld & Vogt Patentanwälte PartGmbB ("B&V"), based in Munich, Germany, is the foreign associate responsible for EPO matters, including B3 (EP 23 741 682.3) and C2 (EP 23 765 901.7). C&H is issuing parallel hold instructions to B&V.

If Trident receives any communications from N&T or B&V regarding OWS applications — whether in the form of deadline alerts, status updates, requests for instructions, or any other correspondence — Trident should promptly forward such communications to C&H at the contact information specified in Section 10. Trident should not take any independent action based on foreign associate communications without prior written approval from C&H. To the extent that N&T or B&V contact Trident directly seeking instructions or authorization, Trident should refer them to Christy Bauer at C&H and should not provide any instructions, authorizations, or guidance on behalf of C&H or OWS.

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 for reactivation at this time. It is possible that the hold will be lifted for individual applications or sub-families on a case-by-case basis as circumstances warrant, rather than for the entire portfolio simultaneously. Any such partial reactivation will be communicated to Trident in writing with specific instructions for the affected applications.

In the interim, if Trident has any questions about whether a particular action is covered by the hold — including edge cases, unusual circumstances, or time-sensitive matters that may not fall neatly within the categories described in this letter — Trident should contact Christy Bauer before taking any action. When in doubt, the default rule is to take no action and to seek guidance from C&H.

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 — International Filings) Working Associate, intellectual Property Group USPTO Reg. No. 79,514 Calderwood & Harkness LLP 555 California Street, 42nd Floor San Francisco, CA 94104

Email: pvassiliev@calderwoodharkness.com

Direct Dial: (415) 392-7861

Catherine Bloom (Responsible Partner — Copy on All Communications) Partner, intellectual Property Group USPTO Reg. No. 58,412 Calderwood & Harkness LLP 555 California Street, 42nd Floor San Francisco, CA 94104

Email: cbloom@calderwoodharkness.com

Direct Dial: (415) 392-7802

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 confirm in your response that:

(a) Trident's docketing system has been updated to reflect the hold/dormant status for all twelve (12) OWS applications identified in Section 2 of this letter;

(b) The enhanced three-tier alert protocol described in Section 4 has been implemented for all OWS application deadlines;

(c) All automated or semi-automatic filing processes for OWS applications have been disabled, except for annuity and maintenance fee payments as described in Section 6(a); and

(d) Your team understands that no filings of any kind are to be made without prior written authorization from Christy Bauer or Catherine Bloom at C&H.

If any aspect of these instructions is unclear or if you foresee any difficulty in implementing any of the procedures described herein, please do not hesitate to contact me directly.

Thank you, Lisa, for Trident's continued diligence and professionalism in managing the OWS docket. We recognize that a hold of this nature places additional monitoring responsibilities on your team, and we are grateful for your attention to these matters. C&H and our client rely heavily on Trident's deadline-monitoring capabilities, and it is critical that these capabilities be applied with the utmost rigor during the hold period to preserve OWS's patent rights across all jurisdictions.

We look forward to receiving your written confirmation and to continuing our productive working relationship with Trident IPS.

Very truly yours,

CALDERWOOD & HARKNESS LLP

By: ________

Christy Bauer Lead Associate, intellectual Property Group USPTO Reg. No. 74,329

cc: Catherine Bloom, Partner, Calderwood & Harkness LLP Peter Vassiliev, Associate, Calderwood & Harkness LLP Sandra Koh, General Counsel, Optiwave Semiconductor Corp.

Enclosure: Current OWS Docket Summary (for reference)

Ref.	Application Number	Type	Filing Date	Jurisdiction
A1	U.S. 17/672,204	Non-Provisional	Jan. 9, 2023	USPTO
A2	U.S. 17/672,311	Continuation	Mar. 15, 2023	USPTO
A3	U.S. 17/672,489	Continuation-in-Part	Jun. 22, 2023	USPTO
A4	PCT/US2023/010584	PCT International	Jan. 9, 2023	WIPO/USPTO RO
A5	PCT/US2023/010612	PCT International	Jan. 9, 2023	WIPO/USPTO RO
B1	U.S. 17/814,057	Non-Provisional	Jul. 21, 2023	USPTO
B2	U.S. 17/814,103	Divisional (Placeholder)	Jul. 21, 2023	USPTO
B3	EP 23 741 682.3	European Regional Phase	Jul. 5, 2023	EPO
B4	JP 2024-542197	Japanese National Phase	Jul. 3, 2023	JPO
C1	U.S. 18/102,776	Non-Provisional	Jan. 29, 2024 (projected)	USPTO
C2	EP 23 765 901.7	European Regional Phase	Jul. 8, 2023	EPO
C3	JP 2024-542305	Japanese National Phase	Jul. 8, 2023	JPO

CONFIDENTIAL
CALDERWOOD & HARKNESS LLP Attorneys at Law
555 California Street, 42nd Floor San Francisco, California 94104 Telephone: (415) 392-7800 Facsimile: (415) 392-7801 www.calderwoodharkness.com
September 12, 2023
VIA EMAIL AND FIRST-CLASS MAIL
Lisa Cheng, Account Manager Trident intellectual Property Services, LLC 9800 Northwest Freeway, Suite 420 Houston, TX 77092
Re: Optiwave Semiconductor Corp. — Docket Hold Instructions C&H Matter No. 1014-00005 Client: Optiwave Semiconductor Corp. ("OWS")
Dear Ms. Cheng:
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 IPS" or "Trident").
Due to a client-directed budget constraint that became effective on August 11, 2023, OWS has instructed C&H to place the active prosecution docket in a hold/dormant status until further notice. This decision reflects OWS's internal capital allocation priorities and is not related to the merits or strategic value of any individual application. However, we must ensure that the hold is implemented uniformly and without exception across the portfolio, and that no patent rights are inadvertently lost or compromised during this period.
Accordingly, effective immediately, all non-critical filings — including without limitation voluntary amendments, information disclosure statements ("IDS" filings), examination requests, requests for continued examination, preliminary amendments, and similar discretionary actions — are to be held and are not to be filed without express written authorization from C&H. The specific parameters of this hold, the applications to which it applies, and the continuing obligations that remain in effect notwithstanding the hold are described in detail below.
We ask that you review these instructions carefully and confirm your receipt and understanding as set forth in Section 11 of this letter.
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 U.S. Provisional Application No. 63/297,841, which was filed on January 10, 2022, and which expired on January 10, 2023. The named inventors common to most of these applications are Dr. Rajan Menon, Dr. Lena Strickland, Dr. Feng-Yi Chen, and Dr. Arjun Dasgupta.
Sub-Family A — Core Modulator Architecture
The Core Modulator Architecture sub-family comprises five applications directed to OWS's silicon-photonic modulator platform:
A1: U.S. Application No. 17/672,204 — Non-Provisional application filed January 9, 2023, before the United States Patent and Trademark Office ("USPTO").
A2: U.S. Application No. 17/672,311 — Continuation application filed March 15, 2023, before the USPTO. This application is a continuation of A1 and claims priority through A1 to U.S. Provisional Application No. 63/297,841.
A3: U.S. Application No. 17/672,489 — Continuation-in-Part application filed June 22, 2023, before the USPTO. This application is a continuation-in-part of A1 and contains additional subject matter relating to advanced modulation architectures not disclosed in the provisional or the parent non-provisional.
A4: PCT/US2023/010584 — PCT International application filed January 9, 2023, with the World intellectual Property Organization ("WIPO"), designating the USPTO as the Receiving Office ("USPTO RO").
A5: PCT/US2023/010612 — PCT International application filed January 9, 2023, with WIPO, designating the USPTO RO.
Sub-Family B — Electrode Fabrication Process
The Electrode Fabrication Process sub-family comprises four applications directed to OWS's proprietary electrode deposition and patterning methods:
B1: U.S. Application No. 17/814,057 — Non-Provisional application filed July 21, 2023, before the USPTO.
B2: U.S. Application No. 17/814,103 — Divisional application of B1, filed July 21, 2023, before the USPTO. Please note that this application is currently a placeholder in the docketing system and has not yet been formally filed with the USPTO. It should remain in the docket as a placeholder entry, and its filing is subject to the hold described herein. No filing action should be taken on B2 without prior written authorization from C&H.
B3: EP 23 741 682.3 — European regional phase application, entered from A4 PCT (PCT/US2023/010584) on July 5, 2023, before the European Patent Office ("EPO").
B4: JP 2024-542197 — Japanese national phase application, entered from A4 PCT (PCT/US2023/010584) on July 3, 2023, before the Japan Patent Office ("JPO").
Sub-Family C — Packaging & Thermal Management
The Packaging & Thermal Management sub-family comprises three applications directed to OWS's advanced chip-packaging and thermal dissipation technologies:
C1: U.S. Application No. 18/102,776 — Non-Provisional application, with a projected filing date of January 29, 2024, before the USPTO. Please note that this application was authorized under the pre-freeze budget and may be filed during the hold period if it has not yet been filed at the time you receive this letter. If C1 is already entered in Trident's tracking system, the hold instructions herein apply to it. If it is not yet in Trident's system, it will be added upon filing by C&H, at which point the hold will apply unless otherwise instructed.
C2: EP 23 765 901.7 — European regional phase application, entered from A5 PCT (PCT/US2023/010612) on July 8, 2023, before the EPO.
C3: JP 2024-542305 — Japanese national phase application, entered from A5 PCT (PCT/US2023/010612) on July 8, 2023, before the JPO.
For ease of reference, we have summarized the foregoing applications in the table below:
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 to preserve OWS's rights in these applications. It is essential that no deadline be missed, overlooked, or inadequately tracked during the hold period, as a missed deadline could result in the permanent and irrevocable loss of patent rights.
The deadlines that Trident must continue to monitor include, but are not limited to, the following:
(a) USPTO Office Action Response Deadlines. This includes all response deadlines arising from non-final Office Actions, final Office Actions, restriction requirements, and other USPTO communications. Both the shortened statutory period (typically three months from mailing) and the maximum six-month statutory deadline under 35 U.S.C. § 133 must be tracked, along with the availability and cost of extensions of time under 37 C.F.R. § 1.136(a).
(b) PCT National-Phase Entry Deadlines. The 30-month deadline from the January 10, 2022 priority date for national-phase entry into designated jurisdictions from A4 (PCT/US2023/010584) and A5 (PCT/US2023/010612) falls on approximately July 9, 2025 (calculated as 30 months from January 10, 2022, adjusted as necessary for weekend or holiday closures in the relevant receiving offices). While regional phase entry has already been completed in the EP and JP for both PCT applications, OWS may wish to enter additional jurisdictions (e.g., China, South Korea, India, or others) prior to the expiration of that deadline, and the option to do so must be preserved through continued tracking.
(c) EPO Response Deadlines. This includes deadlines for responses to extended European search reports ("EESR") issued under EPC Rule 62, as well as deadlines arising under EPC Rules 70a (invitation to respond to EESR), 161 (observations following international preliminary examination), and 162 (amendment opportunities upon entry into the European phase). Designation and renewal fees, and any applicable Rule 71(3) communications, must also be tracked.
(d) JPO Examination Request Deadlines. Under Japanese patent law, a request for examination must be filed within three (3) years from the international filing date for national-phase applications derived from PCT filings. For B4 (JP 2024-542197, derived from A4 filed January 9, 2023), the examination request deadline is January 9, 2026. For C3 (JP 2024-542305, derived from A5 filed January 9, 2023), the examination request deadline is also January 9, 2026. These are absolute deadlines and failure to request examination will result in the deemed withdrawal of the applications.
(e) Maintenance and Annuity Fee Due Dates. Maintenance and annuity fees for any issued patents in the broader OWS portfolio already under Trident management must continue to be tracked and paid in accordance with existing standing instructions. This includes U.S. maintenance fees (due at 3.5, 7.5, and 11.5 years after issuance), EPO annual renewal fees, and JPO annuity fees, as applicable.
(f) Any Other Absolute or Extendable Deadlines. This catch-all category includes any deadline arising from patent office actions, communications, formalities requirements, priority claims, or statutory obligations in any jurisdiction, whether absolute (non-extendable) or subject to extension upon payment of a fee or other action. Trident is to err on the side of over-inclusion in identifying and tracking deadlines.
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) calendar days in advance of the deadline date. This initial alert is intended to provide C&H and the client with sufficient lead time to evaluate whether affirmative action should be authorized and, if so, to prepare the necessary filings or instructions.
(ii) Second Alert — Forty-Five (45) Days. A second reminder alert should be sent no fewer than forty-five (45) calendar days before each deadline. This second alert serves as a follow-up to confirm that the deadline has been noted and that a decision regarding action is in progress.
(iii) Final Alert — Fourteen (14) Days. A final urgent alert should be sent no fewer than fourteen (14) calendar days before any deadline. This alert should be clearly marked as "URGENT — FINAL DEADLINE NOTICE" in the subject line and body of the communication to ensure immediate attention.
All alerts should be directed to the following individuals at C&H:
• Christy Bauer, Lead Associate — Primary contact for all prosecution matters and the first point of contact for deadline-related decisions. Ms. Bauer's contact information is provided in Section 10 below.
• Peter Vassiliev, Working Associate — Backup contact, with particular responsibility for international filings (EPO and JPO matters). Mr. Vassiliev's contact information is provided in Section 10 below.
• Catherine Bloom, Responsible Partner — To be copied on all alerts without exception. Ms. Bloom's contact information is provided in Section 10 below.
Alerts should be sent via email to the email addresses specified in Section 10, with a confirming copy transmitted through Trident's standard docketing-system alert mechanism (i.e., the automated alert functionality within the Trident IP Management Platform, if applicable). We request that email alerts not be sent from unmonitored or "no-reply" addresses; rather, they should originate from an email address that is monitored by your team so that any responses or inquiries from C&H are received and addressed promptly.
Each alert must clearly identify the following information:
(a) The specific application number (both the C&H reference number, e.g., "A1," and the official application number, e.g., "U.S. 17/672,204");
(b) The relevant jurisdiction (USPTO, EPO, JPO, WIPO, or other);
(c) The nature of the deadline (e.g., "Response to Non-Final Office Action," "National-Phase Entry Deadline," "JPO Examination Request Deadline," "EPO Annuity Fee," etc.);
(d) The exact deadline date, expressed in both the local date of the relevant patent office and the corresponding U.S. Pacific Time date if different; and
(e) Whether the deadline is absolute (non-extendable) or subject to extension, and if extendable, the applicable extension mechanism and cost (e.g., "Extendable by up to 3 additional months under 37 C.F.R. § 1.136(a) upon payment of extension fees").
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 (A1) — Non-Final Office Action Response. A non-final Office Action was issued by the USPTO for this application, and a two-month extension of time was filed on September 6, 2023, with the associated extension fee of $640.00 having been paid. The six-month maximum statutory response period under 35 U.S.C. § 133 runs to approximately March 9, 2025. No further extensions of time will be available beyond the remaining statutory period, meaning that the March 9, 2025 date (or the precise date as calculated under USPTO rules) will constitute an absolute, non-extendable bar. Failure to file a response by that date will result in the abandonment of the application. This deadline must be prominently flagged in Trident's system, and the 90-day, 45-day, and 14-day alerts should be treated as the highest priority.
(b) EP 23 741 682.3 (B3) — Extended European Search Report. An extended European search report ("EESR") is anticipated for this application. Upon issuance of the EESR, a six-month response deadline will apply under EPO rules (specifically, EPC Rule 70a in conjunction with Rule 62). Because the issuance date of the EESR is not yet known, Trident should immediately notify C&H upon receipt of the EESR or any related communication from the EPO, and the six-month response deadline should be calculated and docketed promptly upon receipt.
(c) PCT/US2023/010584 (A4) and PCT/US2023/010612 (A5) — National-Phase Entry Deadline. The 30-month national-phase entry deadline for both PCT applications is July 9, 2025 (calculated as 30 months from the January 10, 2022 priority date). While regional phase entry has already been completed for EP and JP, the client may wish to enter additional jurisdictions (including but not limited to China, South Korea, India, Canada, Australia, or others) before the expiration of this deadline. This deadline is absolute and cannot be extended in most jurisdictions. Trident must ensure that this deadline is continuously tracked and that C&H is alerted well in advance so that the client can make informed decisions about additional national-phase entries.
(d) JP 2024-542197 (B4) and JP 2024-542305 (C3) — JPO Examination Request Deadline. The deadline for filing a request for examination at the JPO for both B4 and C3 is January 9, 2026 (three years from the January 9, 2023 international filing date). This deadline is absolute under Japanese patent law, and failure to file an examination request by this date will result in the deemed withdrawal of the respective applications. Given that this deadline falls during the anticipated hold period, it is imperative that Trident track it closely and that C&H receive timely alerts to enable the client to authorize the filing of examination requests if it elects to do so.
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 managed by Trident is to continue without interruption under existing standing instructions. The hold described in this letter pertains exclusively to pending applications and does not affect the maintenance of issued patents. If any question arises regarding the scope of Trident's maintenance fee payment obligations, please contact Christy Bauer for clarification.
(b) Receipt, Logging, and Forwarding of Patent Office Communications. Trident must continue to receive, log into its docketing system, and forward to C&H all patent office communications received for any OWS application. This includes, without limitation, Office Actions, search reports (including the anticipated EESR for B3), notifications, formalities deficiency notices, requests for information, and any other correspondence from the USPTO, EPO, JPO, WIPO, or any other patent office. All such communications must be promptly forwarded to C&H within two (2) business days of receipt by Trident, using the contact information specified in Section 10 below.
(c) Routine Docketing Updates. Trident should continue to make routine docketing updates reflecting newly received correspondence, changed deadlines, updated status information, or other developments in the OWS portfolio. The hold applies to outbound filings and substantive prosecution actions, not to internal record-keeping and docket management.
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 examination (including JPO examination requests);
• Requests for continued examination ("RCE") under 37 C.F.R. § 1.114;
• Voluntary amendments or preliminary amendments;
• Information Disclosure Statements ("IDS");
• National-phase entry filings;
• Declarations, oaths, or inventor's certificates;
• Petitions (including petitions for revival, petitions to make special, or petitions for prioritized examination);
• Any other substantive or procedural filing with any patent office in any jurisdiction.
This instruction supersedes any prior standing instructions that may have authorized routine filings, automatic responses, or other discretionary actions on OWS applications. To the extent that Trident's docketing system or standard operating procedures contemplate automatic or semi-automatic filings (such as auto-pay of certain fees or auto-filing of certain formalities responses), such automated processes must be disabled for all OWS applications for the duration of the hold, except for the annuity and maintenance fee payments described in Section 6(a) above.
Written authorization from C&H must be received before any filing is made. Oral or informal communications do not constitute authorization for purposes of this instruction. Authorization will be provided via email from Christy Bauer (cbauer@calderwoodharkness.com) or Catherine Bloom (cbloom@calderwoodharkness.com) and will reference the specific application number and the specific filing to be made.
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 parallel hold instructions to N&T.
• Breitenfeld & Vogt Patentanwälte PartGmbB ("B&V"), based in Munich, Germany, is the foreign associate responsible for EPO matters, including B3 (EP 23 741 682.3) and C2 (EP 23 765 901.7). C&H is issuing parallel hold instructions to B&V.
If Trident receives any communications from N&T or B&V regarding OWS applications — whether in the form of deadline alerts, status updates, requests for instructions, or any other correspondence — Trident should promptly forward such communications to C&H at the contact information specified in Section 10. Trident should not take any independent action based on foreign associate communications without prior written approval from C&H. To the extent that N&T or B&V contact Trident directly seeking instructions or authorization, Trident should refer them to Christy Bauer at C&H and should not provide any instructions, authorizations, or guidance on behalf of C&H or OWS.
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 for reactivation at this time. It is possible that the hold will be lifted for individual applications or sub-families on a case-by-case basis as circumstances warrant, rather than for the entire portfolio simultaneously. Any such partial reactivation will be communicated to Trident in writing with specific instructions for the affected applications.
In the interim, if Trident has any questions about whether a particular action is covered by the hold — including edge cases, unusual circumstances, or time-sensitive matters that may not fall neatly within the categories described in this letter — Trident should contact Christy Bauer before taking any action. When in doubt, the default rule is to take no action and to seek guidance from C&H.
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 — International Filings) Working Associate, intellectual Property Group USPTO Reg. No. 79,514 Calderwood & Harkness LLP 555 California Street, 42nd Floor San Francisco, CA 94104
Email: pvassiliev@calderwoodharkness.com
Direct Dial: (415) 392-7861
Catherine Bloom (Responsible Partner — Copy on All Communications) Partner, intellectual Property Group USPTO Reg. No. 58,412 Calderwood & Harkness LLP 555 California Street, 42nd Floor San Francisco, CA 94104
Email: cbloom@calderwoodharkness.com
Direct Dial: (415) 392-7802
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 confirm in your response that:
(a) Trident's docketing system has been updated to reflect the hold/dormant status for all twelve (12) OWS applications identified in Section 2 of this letter;
(b) The enhanced three-tier alert protocol described in Section 4 has been implemented for all OWS application deadlines;
(c) All automated or semi-automatic filing processes for OWS applications have been disabled, except for annuity and maintenance fee payments as described in Section 6(a); and
(d) Your team understands that no filings of any kind are to be made without prior written authorization from Christy Bauer or Catherine Bloom at C&H.
If any aspect of these instructions is unclear or if you foresee any difficulty in implementing any of the procedures described herein, please do not hesitate to contact me directly.
Thank you, Lisa, for Trident's continued diligence and professionalism in managing the OWS docket. We recognize that a hold of this nature places additional monitoring responsibilities on your team, and we are grateful for your attention to these matters. C&H and our client rely heavily on Trident's deadline-monitoring capabilities, and it is critical that these capabilities be applied with the utmost rigor during the hold period to preserve OWS's patent rights across all jurisdictions.
We look forward to receiving your written confirmation and to continuing our productive working relationship with Trident IPS.
Very truly yours,
CALDERWOOD & HARKNESS LLP
By: ________
Christy Bauer Lead Associate, intellectual Property Group USPTO Reg. No. 74,329
cc: Catherine Bloom, Partner, Calderwood & Harkness LLP Peter Vassiliev, Associate, Calderwood & Harkness LLP Sandra Koh, General Counsel, Optiwave Semiconductor Corp.
Enclosure: Current OWS Docket Summary (for reference)
Ref. | Application Number | Type | Filing Date | Jurisdiction
A1 | U.S. 17/672,204 | Non-Provisional | Jan. 9, 2023 | USPTO
A2 | U.S. 17/672,311 | Continuation | Mar. 15, 2023 | USPTO
A3 | U.S. 17/672,489 | Continuation-in-Part | Jun. 22, 2023 | USPTO
A4 | PCT/US2023/010584 | PCT International | Jan. 9, 2023 | WIPO/USPTO RO
A5 | PCT/US2023/010612 | PCT International | Jan. 9, 2023 | WIPO/USPTO RO
B1 | U.S. 17/814,057 | Non-Provisional | Jul. 21, 2023 | USPTO
B2 | U.S. 17/814,103 | Divisional (Placeholder) | Jul. 21, 2023 | USPTO
B3 | EP 23 741 682.3 | European Regional Phase | Jul. 5, 2023 | EPO
B4 | JP 2024-542197 | Japanese National Phase | Jul. 3, 2023 | JPO
C1 | U.S. 18/102,776 | Non-Provisional | Jan. 29, 2024 (projected) | USPTO
C2 | EP 23 765 901.7 | European Regional Phase | Jul. 8, 2023 | EPO
C3 | JP 2024-542305 | Japanese National Phase | Jul. 8, 2023 | JPO

CONFIDENTIAL

VIA EMAIL AND FIRST-CLASS MAIL

CALDERWOOD & HARKNESS LLP

Record

Parties

Dates

Amounts