PRIVILEGED AND CONFIDENTIAL — ATTORNEY-CLIENT COMMUNICATION / ATTORNEY WORK PRODUCT This memorandum is protected by the attorney-client privilege and constitutes attorney work product. It is intended solely for the use of the addressees and authorized recipients. Do not copy, distribute, or disclose without the express authorization of Calderwood & Harkness LLP.
MEMORANDUM
FROM: Catherine Bloom, Responsible Partner Intellectual Property Group Calderwood & Harkness LLP 555 California Street, 42nd Floor San Francisco, CA 94104 USPTO Reg. No. 58,412
TO: Marcus Whitfield, General Counsel, Optiwave Semiconductor Corp. Sandra Koh, IP Manager / In-House Patent Counsel, Optiwave Semiconductor Corp. Christine Paulsen, Operating Partner (Technology Sector), Harborview Partners
CC: Alan Ngo, Billing Partner, IP Group, Calderwood & Harkness LLP Christy Bauer, Lead Associate, IP Group, Calderwood & Harkness LLP
DATE: January 15, 2025
RE: Optiwave Semiconductor Corp. — Patent Prosecution Docket Reactivation: Phased Budget Scenarios and Recommended Prioritization
MATTER NO.: C&H Matter No. 1014-00005
PRIVILEGED AND CONFIDENTIAL — ATTORNEY-CLIENT COMMUNICATION / ATTORNEY WORK PRODUCT
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I. EXECUTIVE SUMMARY
This memorandum presents three distinct prosecution-reactivation scenarios for Optiwave Semiconductor Corp.'s ("OWS" or the "Company") twelve-application patent docket, which has remained substantially dormant since August 11, 2023, following Harborview Partners's ("Veltrano" or the "Sponsor") implementation of the Project Lighthouse discretionary spending freeze. The purpose of this memorandum is to provide the decision-makers — Company management and the Sponsor's operating team — with the detailed information necessary to authorize the resumption of patent prosecution activity at a scope commensurate with the Company's budget constraints, risk tolerance, and strategic objectives.
The docket has now been dormant for approximately seventeen months. During that period, several of the twelve pending applications have advanced through the examination process, and several now face imminent, irrevocable statutory deadlines that admit of no further extension. Failure to act before these deadlines will result in permanent and irreversible loss of patent rights.
The most critical deadline is March 9, 2025, affecting U.S. Application No. 17/672,204 (designated herein as "A1"). A1 is the foundational application in the docket. It contains the tapered impedance-matching design-around claims that are essential to OWS's strategy for avoiding infringement liability with respect to the Pinnacle Optics, Inc. Blocking patent family. All available extensions of time have been consumed. The March 9, 2025 deadline is absolute and cannot be extended under any circumstance. Missing this deadline will result in the abandonment of A1.
The second-most critical deadline is April 21, 2025, affecting U.S. Application No. 17/814,057 (designated herein as "B1"), the electrode fabrication process application. A four-month extension of time was filed on October 18, 2024, at a cost of $2,560, under emergency authorization from Sandra Koh. No further extension is available. Missing this deadline will result in the abandonment of B1.
This memorandum evaluates three scenarios for reactivation:
Scenario 1 — Full Reactivation: Resume active prosecution of all twelve applications across all three sub-families (Core Modulator Architecture, Electrode Fabrication Process, and Packaging & Thermal Management). Estimated total cost through mid-2026: $220,000–$295,000.
Scenario 2 — Selective Prosecution (Recommended): Concentrate resources on the four highest-value applications — A1, A3, B1, and B3 — plus the B2 divisional that will follow from the B1 restriction election. Estimated total cost through mid-2026: $70,000–$107,000. Quarterly run-rate of approximately $11,700–$17,800 falls within or near the Project Lighthouse $25,000/quarter cap.
Scenario 3 — Minimum Deadline Preservation: Address only the two most imminent, irrevocable deadlines (A1 on March 9, 2025, and B1 on April 21, 2025). Estimated total cost: $28,500–$38,750.
Calderwood & Harkness's recommendation is as follows: At minimum, Scenario 3 must be authorized immediately given the absolute March 9, 2025 deadline for A1. However, C&H strongly recommends Scenario 2 as the optimal balance of cost, risk mitigation, and strategic portfolio value. Scenario 2 preserves the core defensive patent position against Pinnacle Optics, maintains European protection for the electrode fabrication process, and substantially mitigates the risk of a covenant default under the Meridian National Bank credit facility — all at a cost that is approximately 35–40% of full reactivation and within reasonable reach of current budget constraints.
This memorandum is being delivered contemporaneously with a companion Docket Status & Deadline Triage Memorandum (also dated January 15, 2025) that provides a detailed application-by-application analysis of the prosecution posture and technical merits of each pending application. A third companion memorandum — the Lender Covenant Compliance Analysis and Abandonment Impact Assessment — is in preparation and will be delivered by January 22, 2025. That memorandum will analyze in detail the consequences of partial or full docket abandonment under the terms of the Meridian National Bank Senior Secured Revolving Credit Facility and will include a draft lender notification letter.
II. BACKGROUND
A. Engagement History
Calderwood & Harkness LLP was engaged by Optiwave Semiconductor Corp. on or about February 10, 2022, when Marcus Whitfield, in his capacity as General Counsel, executed the engagement letter for patent prosecution services. The engagement was formally opened under C&H Matter No. 1014-00005 on February 14, 2022. The original scope of the engagement encompassed the patent prosecution of a family of related U.S. and international patent applications covering OWS's next-generation silicon-photonics modulator architecture for 800G and 1.6T data-center optical transceivers — a technology that represents the core of OWS's competitive differentiation in the high-speed optical interconnect market.
The engagement originally encompassed two sub-families of applications: Sub-Family A (Core Modulator Architecture) and Sub-Family B (Electrode Fabrication Process). On June 1, 2023, the engagement scope was expanded, with corresponding amendment to the engagement letter, to include Sub-Family C (Packaging and Thermal Management), bringing the total docket to twelve pending applications across three sub-families, three jurisdictions (United States, Europe, and Japan), and two PCT international applications with national-phase entry decisions pending.
Prior to C&H's engagement, OWS's patent prosecution was handled by Kessler & Morin LLP ("K&M"), a boutique intellectual property firm in McLean, Virginia, under the direction of Dr. Helen Kessler, founding partner. K&M prosecuted OWS's foundational patent portfolio, including all thirty-one U.S. utility patents that issued between 2017 and 2021. Several of the continuation and continuation-in-part applications in the current C&H docket claim priority, directly or indirectly, to parent applications originally drafted and prosecuted by K&M. C&H conducted a thorough review of the K&M prosecution histories at the outset of the engagement to ensure continuity and consistency of claim strategy.
The technical foundation for the current docket is U.S. Provisional Application No. 63/297,841, titled "Multi-Channel Silicon-Photonic Mach-Zehnder Modulator with Segmented Traveling-Wave Electrode Architecture," which was filed on January 10, 2022, by K&M shortly before the transition to C&H. The provisional application expired on January 10, 2023, in accordance with 35 U.S.C. § 111(b)(5). Priority to the provisional was preserved through timely filing, on January 9, 2023, of both the non-provisional application (A1, U.S. App. No. 17/672,204) and the PCT international applications (A4 and A5). All twelve applications in the current docket ultimately claim priority to this provisional filing.
B. The Project Lighthouse Budget Freeze
On August 11, 2023, Harborview Partners, acting in its capacity as the Company's seventy-two percent majority equity sponsor, implemented a cross-portfolio discretionary spending reduction program internally designated "Project Lighthouse." The freeze was communicated to C&H by Christine Paulsen, Operating Partner (Technology Sector) at Veltrano, and confirmed by Marcus Whitfield. Veltrano acquired OWS in 2019 at an enterprise value of $310 million in a transaction led by Veltrano's Managing Partner, Theodore ("Ted") Hargrove.
The Project Lighthouse directive imposed a cap of $25,000 per quarter on discretionary intellectual property spending across all outside counsel engagements for each Veltrano portfolio company. At the time of the freeze, OWS's average quarterly patent prosecution expenditure with C&H alone was approximately $87,400 per quarter — exceeding the newly imposed cap by $62,400 per quarter, or approximately seventy-one percent above the permitted level. The freeze effectively precluded any meaningful prosecution activity.
The Project Lighthouse freeze was precipitated by a sector-wide revenue downturn in the semiconductor and optical communications industries. OWS's fiscal year 2023 revenue was $47.3 million, representing a decline of 30.5% from fiscal year 2022 revenue of $68.1 million. While the cyclical nature of the downturn was broadly acknowledged, Veltrano determined that capital preservation across its portfolio required stringent cost controls, including the reduction of outside professional services expenditures that did not yield immediate, measurable revenue impact.
The last substantive billable activity performed by C&H on this matter prior to the freeze was on September 6, 2023, when Peter Vassiliev (Associate) filed a two-month extension of time request for the A1 Office Action response, at a USPTO fee of $640. That extension pushed the A1 response deadline from its original three-month due date to a date that, combined with subsequent automatic extensions, ultimately yields the current absolute deadline of March 9, 2025.
There has been one discrete exception to the freeze since that date. On October 18, 2024, Calderwood & Harkness filed a four-month extension of time for the B1 Restriction Requirement response, at a USPTO fee of $2,560. This emergency filing was authorized by Sandra Koh under her independent authority to approve expenditures necessary to prevent imminent abandonment. The extension moved the B1 response deadline from October 21, 2024, to April 21, 2025.
C. Outstanding Accounts
As of the date of this memorandum, C&H's total outstanding balance on C&H Matter No. 1014-00005 is $56,958.50, consisting of the following:
•  Unbilled work-in-process (WIP): $34,218.50 — representing time and costs incurred in August and early September 2023, prior to the freeze, that were not invoiced due to the cessation of billing activity.
•  Unpaid invoices: $22,740.00 — representing Invoice No. 2023-07-04187 (July 2023 billing period, $12,490.00) and Invoice No. 2023-08-04187 (August 2023 billing period, $10,250.00), both of which remain unpaid.
C&H respectfully requests that the resolution of this outstanding balance be addressed concurrently with the reactivation authorization. However, to maintain the focus of this memorandum on prospective prosecution costs, the outstanding balance matter is addressed separately and will not be further discussed herein except as noted in Section IX (Fee Structure and Billing Arrangements).
D. Strategic Importance of the Docket
The twelve pending applications in this docket represent a significant portion of OWS's total intellectual property portfolio value and serve critical strategic functions that extend well beyond their intrinsic worth as individual patent rights.
Portfolio Valuation. According to the portfolio valuation report prepared by Graystone Valuation Advisors, LLC (Rebecca Thornton, lead engagement partner), dated April 28, 2023, OWS's total patent portfolio was valued at approximately $38.5 million. Of that amount, the pending twelve-application family was attributed a value of approximately $12.2 million, representing approximately 31.7% of the total portfolio value. While this valuation is now approximately twenty-one months old and would benefit from updating, it represents the most recent third-party assessment and was conducted using methodologies (income approach and market-comparable approach) consistent with accepted valuation standards.
Defensive Patent Position Against Pinnacle Optics. The C&H Freedom-to-Operate Analysis delivered on October 14, 2022, concluded that OWS's commercial silicon-photonics modulator products face "moderate-to-high" infringement risk with respect to Pinnacle Optics, Inc.'s U.S. Patent Nos. 10,823,417 (issued November 3, 2020) and 11,105,662 (issued August 31, 2021). These Pinnacle patents cover a silicon-photonic Mach-Zehnder modulator with a segmented traveling-wave electrode architecture — technology directly implicated by OWS's commercial product line. The FTO analysis identified, however, that OWS's implementation incorporates a distinct tapered impedance-matching design feature that is not disclosed or claimed in the Pinnacle patents and that provides the basis for a design-around strategy. The pending claims in the OWS docket — particularly A1 (U.S. 17/672,204) and A3 (U.S. 17/672,489) — were specifically drafted to capture this tapered impedance-matching feature and to establish an independent patent position that would serve both as a defense in any infringement assertion by Pinnacle and as potential leverage for cross-licensing negotiations.
Lender Covenant Compliance. OWS is a borrower under a $55 million Senior Secured Revolving Credit Facility with Meridian National Bank, N.A., dated September 30, 2020, as amended and restated on March 15, 2022 (the "Credit Facility"). Section 5.15 of the Credit Agreement contains intellectual property covenants requiring OWS to "maintain, preserve, and protect all Material intellectual Property, including by timely prosecuting all pending patent applications." The Security Agreement (Exhibit C to the Credit Agreement) grants Meridian a first-priority security interest in all "Intellectual Property Collateral," including all patents, patent applications, and patent rights, whether existing at the time of the agreement or thereafter acquired. As of December 31, 2024, the outstanding drawn balance on the Credit Facility was approximately $32.5 million. Abandonment of one or more of the pending patent applications may constitute a breach of the Section 5.15 covenants and could trigger an Event of Default under Section 8.1(d) of the Credit Agreement, potentially accelerating the entire outstanding balance. A detailed analysis of the lender covenant implications will be provided in the forthcoming Lender Covenant Compliance Analysis, to be delivered January 22, 2025.
III. CURRENT DOCKET STATUS SUMMARY
A. Overview of the 12-Application Family
The OWS patent docket under C&H's management consists of twelve pending applications organized into three sub-families. All twelve applications ultimately claim priority to U.S. Provisional Application No. 63/297,841, filed January 10, 2022. The three sub-families correspond to three distinct but interrelated technology areas within OWS's next-generation silicon-photonics modulator platform:
•  Sub-Family A — Core Modulator Architecture (5 applications): Claims directed to the fundamental Mach-Zehnder modulator design incorporating the tapered impedance-matching segmented traveling-wave electrode architecture.
•  Sub-Family B — Electrode Fabrication Process (4 applications): Claims directed to the manufacturing processes for fabricating the segmented traveling-wave electrodes, including deposition, lithographic patterning, and post-processing steps.
•  Sub-Family C — Packaging & Thermal Management (3 applications): Claims directed to the co-packaged optics integration and thermal management subsystems that enable the modulator architecture to operate reliably in high-density data-center environments.
The named inventors are common to most applications in the docket, reflecting the collaborative nature of the underlying research and development: Dr. Rajan Menon (Chief Executive Officer), Dr. Lena Strickland (Vice President of Engineering), Dr. Feng-Yi Chen (Principal Engineer), and Dr. Arjun Dasgupta (Senior Design Engineer). Certain Sub-Family C applications also name additional inventors from OWS's packaging engineering team, as detailed in the companion Docket Status & Deadline Triage Memorandum.
The prosecution team relies on several third-party service providers for docketing, annuity management, and foreign prosecution coordination:
•  Trident intellectual Property Services, LLC (Lisa Cheng, Account Manager): Docketing, deadline management, and annuity/maintenance fee monitoring for the entire OWS portfolio.
•  Nakashima & Togawa Patent Professional Corporation (Kenji Nakashima, lead attorney): Japanese patent prosecution, serving as local correspondent firm for JPO national-phase applications B4 and C3.
•  Breitenfeld & Vogt Patentanwälte PartGmbB (Dr. Matthias Vogt, lead partner): European patent prosecution, serving as the EPO-qualified representative for European regional-phase applications B3 and C2.
B. Sub-Family A — Core Modulator Architecture (5 Applications)
Sub-Family A encompasses the foundational patent applications covering OWS's silicon-photonic Mach-Zehnder modulator with the tapered impedance-matching segmented traveling-wave electrode design. This sub-family includes the Company's most strategically critical application (A1) and provides the broadest claim coverage for the core modulator technology.
A1 — U.S. Application No. 17/672,204 Type: Non-Provisional Utility Application Filed: January 9, 2023
Title: "Multi-Channel Silicon-Photonic Mach-Zehnder Modulator with Segmented Traveling-Wave Electrode Architecture"
Status: Non-final Office Action received; response preparation was commenced but suspended prior to the freeze Next Deadline: March 9, 2025 — ABSOLUTE. No further extensions of time are available. A two-month extension was purchased on September 6, 2023 (USPTO fee: $640). The remaining four-month extension window runs from September 9, 2024, through March 9, 2025. Under 35 U.S.C. § 133, the total response period cannot exceed six months from the mailing date of the Office Action, and this outer limit falls on March 9, 2025. This is the foundational application in the docket.
A2 — U.S. Application No. 17/672,311 Type: Continuation (of A1) Filed: March 15, 2023
Title: "Silicon-Photonic Modulator with Tapered Impedance-Matching Electrode Segments"
Status: Awaiting First Office Action; estimated issuance Q2 2025 based on current USPTO art-unit pendency data Next Deadline: None imminent; will require response within three months (extendable to six months) of Office Action mailing
A3 — U.S. Application No. 17/672,489 Type: Continuation-in-Part (of A1) Filed: June 22, 2023
Title: "Enhanced Silicon-Photonic Mach-Zehnder Modulator with Adaptive Impedance-Gradient Electrode Configuration"
Status: Awaiting First Office Action; estimated issuance Q3 2025 Next Deadline: None imminent Note: A3 incorporates additional disclosure and claims directed to the adaptive impedance-gradient configuration developed in H1 2023. The CIP claims complement A1's foundational claims and strengthen the design-around position against Pinnacle.
A4 — PCT/US2023/010584 Type: PCT International Application Filed: January 9, 2023
Title: Same as A1
Status: Chapter I International Search Report and Written Opinion issued July 14, 2023 Next Deadline: July 9, 2025 — 30-month deadline for national-phase entry in jurisdictions beyond those already entered (EP and JP were entered in July 2023; remaining candidate jurisdictions include China (CNIPA) and South Korea (KIPO))
A5 — PCT/US2023/010612 Type: PCT International Application Filed: January 9, 2023
Title: "Segmented Traveling-Wave Electrode Architecture for High-Bandwidth Silicon-Photonic Modulators"
Status: Chapter I International Search Report and Written Opinion issued August 2, 2023 Next Deadline: July 9, 2025 — 30-month deadline for national-phase entry; same considerations as A4
C. Sub-Family B — Electrode Fabrication Process (4 Applications)
Sub-Family B covers the proprietary manufacturing processes for the segmented traveling-wave electrodes that are integral to the modulator architecture claimed in Sub-Family A. These process claims provide an independent layer of protection: even if a competitor were to design around the modulator architecture claims, it could not readily replicate OWS's fabrication processes without infringing the Sub-Family B claims.
B1 — U.S. Application No. 17/814,057 Type: Non-Provisional Utility Application Filed: July 21, 2023
Title: "Method for Fabricating Segmented Traveling-Wave Electrodes for Silicon-Photonic Modulators"
Status: Restriction Requirement issued by USPTO; response preparation pending Next Deadline: April 21, 2025 — Extended deadline following the four-month extension of time filed October 18, 2024 (USPTO fee: $2,560; emergency authorization from Sandra Koh). The original deadline was October 21, 2024. No further extension is available.
B2 — U.S. Application No. 17/814,103 Type: Divisional (of B1) — Placeholder Filed: Not yet filed Status: Filing of the B2 divisional depends on the election made in response to the B1 Restriction Requirement. Upon electing one group of claims for prosecution in B1, the non-elected claims will be carried forward in B2. Next Deadline: Not applicable until B1 restriction response is filed
B3 — EP Application No. 23 741 682.3 Type: European Regional Phase (entered from A4 PCT) Filed/Entered: July 5, 2023
Title: As per A4
Status: Extended European Search Report (EESR) received November 17, 2023; observations in the EESR raise issues of novelty and inventive step that require a substantive response with amended claims Next Deadline: May 17, 2025 — Six months from deemed notification date, per EPO Rules 70a, 161, and 162. Failure to respond may result in deemed withdrawal of the application under EPC Article 94(3).
B4 — JP Application No. 2024-542197 Type: Japanese National Phase (entered from A4 PCT) Filed/Entered: July 3, 2023 Status: Application entered; awaiting examination request Next Deadline: January 9, 2026 — Three years from the PCT international filing date (January 9, 2023), per JPO rules. An examination request must be filed and the examination fee paid by this date, or the application will be deemed withdrawn.
D. Sub-Family C — Packaging & Thermal Management (3 Applications)
Sub-Family C addresses the co-packaged optics integration and thermal management technologies that are essential for the commercial deployment of OWS's modulator platform in dense, high-power data-center environments. These applications were added to the C&H engagement scope on June 1, 2023, and represent the most recently filed portion of the docket.
C1 — U.S. Application No. 18/102,776 Type: Non-Provisional Utility Application Filed: January 29, 2024 (filed under pre-freeze budget authorization, as the filing had been authorized prior to the Project Lighthouse freeze and was in the final stages of preparation)
Title: "Thermally-Managed Co-Packaged Optical Transceiver Module for High-Density Data Center Applications"
Status: Awaiting First Office Action; estimated issuance Q4 2025 Next Deadline: None imminent
C2 — EP Application No. 23 765 901.7 Type: European Regional Phase (entered from A5 PCT) Filed/Entered: July 8, 2023 Status: Rule 161/162 response filed September 1, 2023 (one of the last pre-freeze filings); awaiting Extended European Search Report (EESR), estimated issuance mid-2025 Next Deadline: None imminent; EESR response deadline will be set upon issuance of EESR
C3 — JP Application No. 2024-542305 Type: Japanese National Phase (entered from A5 PCT) Filed/Entered: July 8, 2023 Status: Awaiting examination request Next Deadline: January 9, 2026 — Three years from the PCT international filing date, same as B4
IV. CRITICAL DEADLINE TRIAGE — RANKED BY URGENCY
The following section organizes the pending deadlines in the OWS docket by urgency and consequence, using a three-tier traffic-light classification system. This classification is consistent with the companion Docket Status & Deadline Triage Memorandum being delivered contemporaneously.
Priority 1 — RED: Imminent and Irrevocable
These deadlines are approaching within the next four months, and no further extensions of time are available under applicable law or treaty. Missing either of these deadlines will result in the permanent abandonment of the affected application with no possibility of revival through petition or other procedural mechanism (other than a petition to revive under 37 C.F.R. § 1.137, which requires a showing of unintentional delay and is not guaranteed, carries additional cost, and involves significant risk and delay).
March 9, 2025 — Application A1 (U.S. App. No. 17/672,204)
This is the single most critical deadline in the docket. Application A1 is the foundational U.S. application covering the tapered impedance-matching segmented traveling-wave electrode architecture. A non-final Office Action was mailed by the USPTO, and all available extensions of time under 35 U.S.C. § 133 have been exhausted. The statutory six-month outer limit for responding to the Office Action falls on March 9, 2025. There is no mechanism to extend this deadline further. Failure to file a complete, substantive response to the Office Action by March 9, 2025, will result in the abandonment of A1.
The consequences of abandoning A1 are severe and multifaceted. A1 contains the claims that embody the design-around strategy for the Pinnacle Optics blocking patents (U.S. Patent Nos. 10,823,417 and 11,105,662). Without A1, OWS would lose its primary defensive patent position with respect to the tapered impedance-matching feature that distinguishes its commercial products from the Pinnacle claims. The "moderate-to-high" infringement risk identified in C&H's October 14, 2022 FTO analysis would materialize with no offsetting patent protection, leaving OWS exposed to potential enforcement action by Pinnacle without meaningful leverage for cross-licensing or settlement negotiations.
April 21, 2025 — Application B1 (U.S. App. No. 17/814,057)
Application B1 is the foundational U.S. application covering the electrode fabrication process. The USPTO issued a Restriction Requirement, and the original response deadline of October 21, 2024, was extended by four months through the emergency extension filed on October 18, 2024 (at a cost of $2,560). The extended deadline of April 21, 2025, is now the final deadline; no further extensions are available. Failure to file a response to the Restriction Requirement — electing one group of claims for continued prosecution and reserving the non-elected claims for a divisional application (B2) — will result in the abandonment of B1.
The loss of B1 would eliminate OWS's manufacturing-process patent protection, which provides an independent and complementary layer of IP defense beyond the modulator-architecture claims in Sub-Family A. It would also preclude the filing of the B2 divisional, which is dependent on the B1 restriction election.
Priority 2 — YELLOW: Near-Term, Significant Consequence
These deadlines fall within the next seven months. While the consequences of missing these deadlines are significant — including the permanent loss of foreign patent protection and the foreclosure of additional national-phase jurisdiction options — there is modestly more time available for decision-making and preparation.
May 17, 2025 — Application B3 (EP 23 741 682.3)
The EPO Extended European Search Report was received on November 17, 2023. Under EPO Rules 70a, 161, and 162, OWS must file a response — typically including amended claims and arguments addressing the examiner's novelty and inventive-step objections — within six months of the deemed notification date. The response deadline is May 17, 2025. Failure to respond may result in deemed withdrawal of the application under EPC Article 94(3), terminating European patent protection for the electrode fabrication process technology.
European patent protection is strategically significant for OWS. Many of OWS's largest data-center customers operate significant infrastructure in Europe, and several OWS competitor firms (including Pinnacle Optics' European subsidiary) manufacture and sell competing products in the European market. Loss of European coverage would undermine OWS's ability to enforce its electrode-process IP in a major commercial jurisdiction.
July 9, 2025 — Applications A4 (PCT/US2023/010584) and A5 (PCT/US2023/010612)
The thirty-month deadline from the January 10, 2022 priority date for entering additional national phases under the PCT expires on July 9, 2025. OWS has already entered the European and Japanese national phases (B3 and B4 from A4; C2 and C3 from A5). The remaining candidate jurisdictions that have been under consideration include China (CNIPA) and South Korea (KIPO), both of which represent significant markets for optical transceiver technology. If OWS does not file national-phase entries in these jurisdictions by July 9, 2025, the opportunity to obtain patent protection in those jurisdictions from these PCT applications will be permanently and irreversibly lost.
Priority 3 — GREEN: Longer Horizon
These deadlines are more than eleven months away. While they require attention in due course, there is adequate time for strategic planning and deliberation.
January 9, 2026 — Applications B4 (JP 2024-542197) and C3 (JP 2024-542305)
Both Japanese national-phase applications require the filing of an examination request within three years of the PCT international filing date (January 9, 2023). The examination request must be accompanied by the JPO examination fee (approximately ¥150,000, or approximately $1,000 at current exchange rates). Failure to file the examination request by January 9, 2026, will result in the deemed withdrawal of the applications, terminating OWS's ability to obtain Japanese patent protection from these filings.
Applications with No Imminent Deadlines
The following applications have no pending deadlines that require action in the near term. They are either awaiting issuance of a first Office Action or search report from the relevant patent office, or they are dependent on a prior action in another application:
•  A2 (U.S. 17/672,311): Continuation of A1; awaiting First Office Action (estimated Q2 2025)
•  A3 (U.S. 17/672,489): CIP of A1; awaiting First Office Action (estimated Q3 2025)
•  C1 (U.S. 18/102,776): Non-Provisional; awaiting First Office Action (estimated Q4 2025)
•  C2 (EP 23 765 901.7): European regional phase; awaiting EESR (estimated mid-2025)
•  B2 (U.S. 17/814,103): Placeholder divisional; filing depends on B1 restriction election response
V. SCENARIO 1: FULL REACTIVATION OF ALL 12 APPLICATIONS
A. Scope
Under Scenario 1, Calderwood & Harkness would resume active prosecution of all twelve pending applications across all three sub-families. This represents a complete reactivation of the docket to its pre-freeze posture, with prosecution activity proceeding on all U.S., European, and Japanese applications, as well as the remaining PCT national-phase entry decisions.
The scope of work under Scenario 1 includes the following:
•  Preparation and filing of the A1 non-final Office Action response (U.S. 17/672,204) — immediate priority
•  Preparation and filing of the B1 Restriction Requirement response (U.S. 17/814,057), including election of claims and preservation of non-elected claims for divisional filing
•  Preparation and filing of the B2 divisional application (U.S. 17/814,103) upon completion of the B1 restriction election
•  Coordination with Breitenfeld & Vogt for preparation and filing of the B3 EPO EESR response (EP 23 741 682.3)
•  Strategic analysis and execution of national-phase entries for A4 and A5 in additional jurisdictions (China, South Korea, and any other jurisdictions deemed commercially significant), coordinated with appropriate foreign associate firms
•  Response preparation and filing for anticipated First Office Actions in A2, A3, and C1 as they are received
•  Coordination with Breitenfeld & Vogt for response to C2 EESR when issued
•  Coordination with Nakashima & Togawa for filing of JPO examination requests for B4 and C3
•  Ongoing monitoring, docketing coordination with Trident IPS, and foreign associate management for the full portfolio
B. Phased Budget Breakdown (Through Mid-2026)
The estimated costs for Scenario 1 are presented below in four phases, corresponding to the anticipated timeline of prosecution activity. All attorney-fee estimates reflect the 10% volume discount on C&H standard hourly rates, as set forth in the existing engagement letter and detailed in Section IX below.
Phase 1: Immediate Action (January–March 2025)
The sole focus of Phase 1 is the A1 Office Action response, which must be filed by the March 9, 2025 absolute deadline.
A1 Office Action Response (U.S. 17/672,204):
•  Estimated attorney hours: 40–55 hours (blended across Partner, Senior Associate, and Associate)
•  Primary drafter: Christy Bauer (Senior Associate, $562.50/hr discounted)
•  Reviewing partner: Catherine Bloom (Partner, $805.50/hr discounted)
•  Technical support and prior-art analysis: Peter Vassiliev (Associate, $427.50/hr discounted)
•  Estimated C&H attorney fees: $22,000–$30,000
•  USPTO fees: Approximately $2,000 if a Request for Continued Examination (RCE) is determined to be necessary; $0 if the response is accepted without the need for an RCE
•  Task description: Completion of the incomplete draft response that Christy Bauer prepared through August 2023, which was suspended prior to partner review when the freeze was imposed. The draft response addresses the examiner's prior-art rejections under 35 U.S.C. § 102 and § 103, with particular emphasis on distinguishing the claims over the cited references by highlighting the tapered impedance-matching feature — the same feature that constitutes OWS's design-around strategy with respect to the Pinnacle '417 and '662 patents. The draft will require partner-level review, substantive revision to incorporate developments in the art and any intervening prosecution activity in related applications, and finalization for filing.
Phase 1 Estimated Total: $22,000–$30,000 (exclusive of USPTO fees, which may add up to $2,000)
Phase 2: Near-Term Deadlines (April–May 2025)
Phase 2 addresses the next three deadlines in the docket: the B1 Restriction Requirement response, the B3 EPO EESR response, and the preparation and filing of the B2 divisional application.
B1 Restriction Requirement Response (U.S. 17/814,057):
•  Estimated attorney hours: 8–12 hours
•  Primary drafter: Christy Bauer (Senior Associate)
•  Estimated C&H attorney fees: $4,500–$6,750
•  USPTO fees: $0 for the restriction response itself
•  Task description: Analysis of the Restriction Requirement to determine the optimal election of species or invention group for continued prosecution in B1, with consideration of which non-elected claims should be preserved for the B2 divisional. The election strategy must account for the commercial significance of each claim group as well as prosecution efficiency. The response will include a provisional election with traverse (or without traverse, depending on strategic analysis).
B3 EPO EESR Response (EP 23 741 682.3):
•  Estimated attorney hours (C&H): 20–30 hours
•  Coordinator: Peter Vassiliev (Associate)
•  Reviewing partner: Catherine Bloom
•  Estimated C&H attorney fees: $11,250–$16,875
•  Breitenfeld & Vogt foreign associate fees: Approximately €3,500–€5,000 (approximately $3,800–$5,400 at the current exchange rate of approximately $1.08/€)
•  EPO official fees: Approximately €580 (approximately $626) for the examination fee, if not already paid at entry
•  Task description: Coordination with Dr. Matthias Vogt at Breitenfeld & Vogt for the preparation of a substantive response to the EESR, including amended claims and arguments addressing the examiner's novelty and inventive-step objections. C&H will prepare the technical arguments and claim amendments in consultation with the OWS inventor team, and B&V will file the response in proper form before the EPO.
B2 Divisional Filing (U.S. 17/814,103):
•  Estimated attorney hours: 15–25 hours
•  Primary drafter: Christy Bauer
•  Estimated C&H attorney fees: $8,000–$14,000
•  USPTO filing fees: Approximately $800–$1,600 (depending on entity size qualification and number of claims)
•  Task description: Preparation and filing of the divisional application based on the non-elected claims from B1. The divisional will require a specification, claims, and drawings consistent with the B1 disclosure, adapted to the elected claim group.
Phase 2 Estimated Total: $28,000–$43,000 (inclusive of B&V fees and EPO official fees)
Phase 3: Mid-Year Actions (June–July 2025)
Phase 3 addresses the PCT national-phase entry decisions and begins monitoring and preparation for the anticipated First Office Actions in A2 and A3.
A4 & A5 PCT National-Phase Entries:
•  Jurisdictions under consideration: China (CNIPA), South Korea (KIPO), and potentially additional jurisdictions based on OWS's commercial strategy
•  Per-jurisdiction estimated costs: $5,000–$15,000 per jurisdiction, encompassing filing fees, translation costs (particularly significant for China and South Korea), and foreign associate appointment and filing charges
•  Strategic decision required: The number and identity of jurisdictions to enter will be determined based on commercial analysis of OWS's customer base, revenue distribution, competitive landscape, and budget constraints. C&H will prepare a jurisdiction-selection memorandum for client review prior to the July 9, 2025 deadline.
Monitoring and Response Preparation for A2 and A3:
•  Estimated hours: 5–10 hours for monitoring and initial assessment of Office Actions as they are received
•  Estimated C&H fees: Included in overall Phase 3 estimate; formal response preparation budgeted in Phase 4
Phase 3 Estimated Total: $25,000–$55,000 (highly variable based on the number of national-phase jurisdictions selected)
Phase 4: Ongoing Prosecution (August 2025–Mid-2026)
Phase 4 encompasses the responses to anticipated Office Actions and search reports in the applications that are currently awaiting examination, as well as the JPO examination requests for B4 and C3.
A2 First Office Action Response (U.S. 17/672,311):
•  Estimated C&H fees: $15,000–$25,000
•  Note: The A2 continuation shares substantially the same specification as A1, and the prosecution strategy for A2 will be informed by the outcome of the A1 response. If A1 is allowed, the A2 claims may be adjusted to capture alternative or broader claim scope.
A3 First Office Action Response (U.S. 17/672,489):
•  Estimated C&H fees: $15,000–$25,000
•  Note: A3, as a CIP with additional disclosure, may face different prior-art challenges than A1 and A2. The adaptive impedance-gradient claims in A3 are expected to require careful prosecution to distinguish over additional references not applied against A1.
C1 First Office Action Response (U.S. 18/102,776):
•  Estimated C&H fees: $15,000–$25,000
•  Note: C1 addresses packaging and thermal management technology; the prosecution may involve distinct art units and examiner teams from those handling Sub-Families A and B.
C2 EPO EESR Response (EP 23 765 901.7):
•  Estimated C&H fees (including B&V coordination): $15,000–$22,000
•  Note: Timing depends on EESR issuance, estimated mid-2025, with a response deadline approximately six months after deemed notification.
B4 and C3 JPO Examination Requests (JP 2024-542197 and JP 2024-542305):
•  Estimated costs per application: $3,000–$5,000 through Nakashima & Togawa, plus JPO official examination fees of approximately ¥150,000 (approximately $1,000) each
•  Total for both: $8,000–$12,000
Ongoing Portfolio Monitoring, Docketing, and Foreign Associate Management:
•  Estimated C&H fees: $5,000–$8,000 through mid-2026
•  Includes coordination with Trident IPS (Lisa Cheng) for deadline monitoring and annuity tracking, and periodic communication with Nakashima & Togawa and Breitenfeld & Vogt regarding the status of foreign filings
Phase 4 Estimated Total: $70,000–$115,000
C. Total Estimated Cost — Scenario 1
These estimates cover the period from the date of reactivation authorization through approximately mid-2026 (June–July 2026), encompassing approximately six calendar quarters of prosecution activity.
For context, the pre-freeze average quarterly C&H attorney-fee expenditure was approximately $87,400 per quarter. Full reactivation over approximately six quarters implies an average quarterly run-rate of approximately $30,800–$40,800 per quarter in C&H attorney fees alone. While this run-rate is meaningfully below the pre-freeze average (reflecting the front-loaded nature of the current deadline-driven work), it substantially exceeds the Project Lighthouse cap of $25,000 per quarter.
D. Advantages
1.  Full Portfolio Preservation. Scenario 1 preserves the entire twelve-application patent portfolio and its estimated $12.2 million value (per the Graystone April 28, 2023 valuation). No applications are abandoned, and no jurisdictional coverage is forfeited.
2.  Complete Lender Covenant Compliance. Active prosecution of all pending applications ensures full compliance with Section 5.15 of the Meridian Credit Facility, eliminating the risk of a covenant default and potential acceleration of the $32.5 million outstanding balance.
3.  Maximum Defensive Position Against Pinnacle Optics. Prosecution across all sub-families and all jurisdictions maximizes OWS's ability to assert a comprehensive patent portfolio against Pinnacle in the event of an infringement dispute, cross-licensing negotiation, or portfolio-level enforcement campaign.
4.  Full Flexibility for Future Monetization. A complete, actively prosecuted portfolio preserves maximum flexibility for future licensing, cross-licensing, portfolio sale, or other monetization strategies. This is particularly relevant in the context of a potential future exit by Veltrano, where portfolio value would be a significant component of enterprise valuation.
5.  International Protection. Full reactivation preserves patent protection in Europe, Japan, and potentially China and South Korea — jurisdictions that are critical to OWS's global customer base and competitive position.
E. Disadvantages
1.  Highest Total Cost. At $220,000–$295,000, Scenario 1 represents the most expensive path forward and may be incompatible with continued Project Lighthouse budget constraints absent a material revision to the spending cap.
2.  Includes Lower-Priority Applications. Scenario 1 allocates resources to the Sub-Family C applications (packaging and thermal management), which, while commercially relevant, have less immediate strategic importance than the core modulator (Sub-Family A) and electrode process (Sub-Family B) applications. The incremental cost of prosecuting the C-family applications may not be justified under current budget constraints.
3.  Requires Additional Strategic Input on National-Phase Entries. The PCT national-phase entry decisions for A4 and A5 require input from OWS's commercial team regarding the relevance of additional jurisdictions (China, South Korea, etc.) to the Company's go-to-market strategy. This analysis has not yet been conducted and would add complexity and timeline to the reactivation process.
4.  Exceeds Project Lighthouse Cap. The quarterly run-rate of $30,800–$40,800 substantially exceeds the $25,000/quarter cap, requiring either a revision to the cap or a multi-quarter exception from Veltrano.
VI. SCENARIO 2: SELECTIVE PROSECUTION OF HIGHEST-VALUE APPLICATIONS (RECOMMENDED)
A. Scope
Under Scenario 2, Calderwood & Harkness would concentrate prosecution resources on the four applications with the highest strategic value and/or the most imminent deadlines: A1, A3, B1, and B3, plus the B2 divisional that will follow from the B1 restriction election. All remaining applications would be placed on a monitoring-only or hold status, with deadlines tracked by Trident IPS but no affirmative prosecution action taken unless separately authorized.
The rationale for the selection of these four applications is as follows:
A1 (U.S. App. No. 17/672,204) — Foundational U.S. Modulator Application. A1 is the single most important application in the docket. It contains the foundational claims covering the tapered impedance-matching segmented traveling-wave electrode architecture — the core design-around feature that enables OWS to practice its silicon-photonic modulator technology without infringing the Pinnacle Optics blocking patents (U.S. Patent Nos. 10,823,417 and 11,105,662). A1 also faces the most imminent and irrevocable deadline in the docket (March 9, 2025). There is no scenario under which A1 should be abandoned.
A3 (U.S. App. No. 17/672,489) — CIP with Expanded Design-Around Scope. A3 is the continuation-in-part application that incorporates additional disclosure related to the adaptive impedance-gradient electrode configuration, an enhancement to the core modulator design developed in the first half of 2023. The A3 claims complement and strengthen the design-around position established in A1 by covering additional embodiments and variations of the tapered impedance-matching feature. Although A3 does not face an imminent deadline, its prosecution should be maintained to ensure that the full scope of the design-around strategy is captured in issued patent claims.
B1 (U.S. App. No. 17/814,057) — Electrode Fabrication Process. B1 covers the critical manufacturing processes for the segmented traveling-wave electrodes. Process claims provide an independent layer of protection that complements the apparatus and system claims in Sub-Family A: a competitor seeking to replicate OWS's modulator technology would need to overcome both the device-level claims (A1, A3) and the process-level claims (B1). B1 also faces the second-most imminent deadline in the docket (April 21, 2025), and its prosecution is a prerequisite for filing the B2 divisional.
B3 (EP 23 741 682.3) — European Electrode-Process Protection. B3 provides European patent coverage for the electrode fabrication process. European protection is strategically important given the significant European market presence of OWS's data-center customers and the competitive activity of Pinnacle Optics' European operations. B3 faces a May 17, 2025 deadline for responding to the Extended European Search Report. While B3 is not as immediately urgent as A1 or B1, its prosecution should be maintained to preserve OWS's European IP position.
Applications Placed on Monitoring-Only/Hold Status:
The following applications would not receive active prosecution under Scenario 2 but would continue to be monitored by Trident IPS for deadline tracking and status updates:
•  A2 (U.S. 17/672,311): The A2 continuation provides backup claim scope to A1 and shares the same underlying specification. Because A2 is awaiting its first Office Action (estimated Q2 2025), no immediate cost is required. However, the A2 deadline for responding to the Office Action will need to be addressed when it arrives. Under Scenario 2, A2 remains on hold; if the First Office Action issues, a supplemental budget authorization will be requested.
•  A4 (PCT/US2023/010584) and A5 (PCT/US2023/010612): National-phase entry decisions for additional jurisdictions (China, South Korea) are deferred under Scenario 2. The July 9, 2025 thirty-month deadline is flagged for decision; if no affirmative action is taken, unselected jurisdictions will be permanently foreclosed. Low-cost monitoring continues through Trident IPS. It is possible that a supplemental authorization could be issued before July 9, 2025 to enter one or more additional national phases, if the budget permits.
•  B2 (U.S. 17/814,103): The B2 divisional cannot be filed until the B1 restriction response is submitted. Under Scenario 2, the B1 restriction response is included, enabling the future filing of B2. The actual preparation and filing of B2 is also included in the Scenario 2 budget (Phase 3), as the divisional directly flows from the B1 election and is essential to preserving the full scope of OWS's electrode-process IP.
•  B4 (JP 2024-542197) and C3 (JP 2024-542305): JPO examination requests deferred; the January 9, 2026 deadline will need to be addressed in a subsequent budget cycle or through a supplemental authorization.
•  C1 (U.S. 18/102,776): Awaiting First Office Action (estimated Q4 2025); no immediate cost. Prosecution deferred.
•  C2 (EP 23 765 901.7): Awaiting EESR (estimated mid-2025); no immediate cost. Prosecution deferred.
B. Phased Budget Breakdown
Phase 1: Immediate (January–March 2025)
Phase 1 under Scenario 2 is identical to Phase 1 under Scenario 1: the sole focus is the A1 Office Action response.
A1 Office Action Response (U.S. 17/672,204):
•  Estimated C&H attorney fees: $22,000–$30,000
•  USPTO fees: Up to $2,000 if RCE required
•  Scope and task description: Same as Scenario 1, Phase 1 (see Section V.B above)
Phase 1 Estimated Total: $22,000–$30,000 (exclusive of potential RCE fee)
Phase 2: Near-Term (April–May 2025)
Phase 2 addresses the B1 Restriction Requirement response and the B3 EPO EESR response.
B1 Restriction Requirement Response (U.S. 17/814,057):
•  Estimated C&H attorney fees: $4,500–$6,750
•  USPTO fees: $0 for restriction response
•  Scope: Same as Scenario 1, Phase 2
B3 EPO EESR Response (EP 23 741 682.3):
•  Estimated total (C&H fees + B&V fees + EPO fees): $15,000–$22,000
•  Breakdown: C&H attorney fees $11,250–$16,875; B&V fees approximately $3,800–$5,400; EPO examination fee approximately $626
•  Scope: Same as Scenario 1, Phase 2
Phase 2 Estimated Total: $19,500–$28,750
Phase 3: Ongoing through Mid-2026
Phase 3 under Scenario 2 covers the A3 First Office Action response (when received), the B2 divisional filing, and ongoing monitoring for the remaining applications.
A3 First Office Action Response (U.S. 17/672,489):
•  Estimated C&H attorney fees: $15,000–$25,000
•  Timing: First Office Action anticipated Q3 2025; response due within three to six months thereafter
•  Note: The A3 response strategy will be informed by the outcome of the A1 prosecution. If A1 claims are allowed with the tapered impedance-matching feature, the A3 claims can be tailored to capture the complementary adaptive impedance-gradient embodiments without duplication.
B2 Divisional Filing (U.S. 17/814,103):
•  Estimated C&H attorney fees: $8,000–$14,000
•  USPTO filing fees: Approximately $800–$1,600
•  Timing: Filing to follow promptly after the B1 restriction election response
Monitoring and Docketing for Remaining Applications:
•  Estimated C&H fees: $5,000–$8,000 through mid-2026
•  Includes coordination with Trident IPS for ongoing deadline monitoring, periodic status reports, and communication with Nakashima & Togawa and Breitenfeld & Vogt regarding held applications
Phase 3 Estimated Total: $28,000–$47,000 (inclusive of USPTO fees for B2)
C. Total Estimated Cost — Scenario 2
These estimates cover the period from the date of reactivation authorization through approximately mid-2026, encompassing approximately six calendar quarters. The implied quarterly run-rate for C&H attorney fees is approximately $9,200–$14,200 per quarter; the all-in quarterly run-rate (inclusive of government fees, foreign associate fees, and disbursements) is approximately $11,700–$17,800 per quarter. This run-rate falls within or near the Project Lighthouse $25,000/quarter cap, making Scenario 2 the most realistic option for implementation without requiring a fundamental restructuring of the Veltrano spending constraints. Modest exceptions to the cap may be required in quarters with concentrated deadline activity (particularly Q1 2025, when the A1 response must be filed), but the overall spending trajectory is broadly consistent with the existing framework.
D. Advantages
1.  Concentrates Resources on Highest-Value Applications. Scenario 2 prioritizes the four applications that are most critical to OWS's defensive patent position against Pinnacle Optics and its manufacturing-process IP protection. The selected applications — A1, A3, B1, and B3 — together represent the core of OWS's patent strategy and the most commercially significant claim scope in the docket.
2.  Cost-Effective. At $70,000–$107,000, Scenario 2 represents approximately 35–40% of the cost of full reactivation. The quarterly run-rate is achievable within or near the Project Lighthouse constraints, potentially with modest, time-limited exceptions for concentrated deadline quarters.
3.  Preserves Core Portfolio Value. While not all twelve applications are actively prosecuted, the four selected applications and the B2 divisional together capture the most strategically valuable elements of the portfolio. The applications placed on hold remain pending and can be reactivated in subsequent budget cycles without loss of rights, provided their respective deadlines are managed.
4.  Substantially Reduces Lender-Covenant-Default Risk. Active prosecution of the four most significant applications — including the foundational U.S. applications (A1 and B1) and the European protection (B3) — substantially mitigates the risk that Meridian National Bank could successfully assert a covenant default under Section 5.15. While the covenant language is broad ("all pending patent applications"), the argument for compliance is strongest when the most material applications are being actively prosecuted. The forthcoming Lender Covenant Compliance Analysis will provide a detailed assessment.
5.  Maintains European Protection. By including B3 in the selected applications, Scenario 2 preserves European patent coverage for the electrode fabrication process — an important consideration given OWS's European customer relationships and competitive landscape.
E. Disadvantages
1.  Defers PCT National-Phase Entry Decisions. Under Scenario 2, the A4 and A5 national-phase entry decisions are deferred. If the July 9, 2025 thirty-month deadline passes without action, the opportunity to enter additional jurisdictions (China, South Korea, and any others) is permanently and irreversibly lost. This is a significant strategic concession, particularly given the growing importance of the Chinese optical communications market.
2.  Sub-Family C Applications Unaddressed. The packaging and thermal management applications (C1, C2, C3) are not actively prosecuted under Scenario 2. While these applications are not currently facing imminent deadlines, they address technology areas that may become increasingly important as OWS's product line evolves and as the data-center industry moves toward co-packaged optics architectures. Deferring prosecution of these applications carries a risk that the commercial landscape may shift before they are addressed.
3.  Japanese Examination Requests Deferred. The B4 and C3 JPO examination requests (deadline January 9, 2026) are deferred to a subsequent budget cycle. While this is manageable given the longer timeline, it means that Japanese patent protection for both the electrode process and packaging technologies will be delayed, and the January 9, 2026 deadline will need to be addressed within approximately twelve months of reactivation.
4.  Potential Residual Lender-Covenant Exposure. Although Scenario 2 substantially mitigates the covenant-default risk, a conservative reading of the Meridian Credit Facility's Section 5.15 language — which requires OWS to "timely prosecut[e] all pending patent applications" — could support an argument that failure to actively prosecute every pending application constitutes a technical default. This argument is analyzed in detail in the forthcoming Lender Covenant Compliance Analysis (January 22, 2025).
F. Recommended Actions Under Scenario 2
If Scenario 2 is authorized, C&H recommends the following action timeline:
1.  By January 31, 2025: Authorization for Phase 1 (A1 Office Action response). This authorization must be issued no later than January 31, 2025, to allow the prosecution team adequate preparation time before the March 9, 2025 absolute deadline. The response requires 40–55 hours of attorney work; assuming authorization by late January, the team would have approximately five to six weeks of working time. The incomplete draft prepared by Christy Bauer through August 2023 provides a foundation, but the draft is now approximately seventeen months old and requires partner-level review, substantive revision to account for intervening developments in the art and the prosecution of related applications, and finalization for filing.
2.  By March 15, 2025: Decision on Phase 2 elements — specifically, authorization for the B1 Restriction Requirement response, the B3 EPO EESR response (requiring coordination with Breitenfeld & Vogt), and the commencement of B2 divisional preparation. Authorizing Phase 2 by March 15 provides approximately five weeks of lead time before the April 21, 2025 B1 deadline and two months before the May 17, 2025 B3 deadline.
3.  By June 1, 2025: Decision on A4/A5 national-phase entry strategy. Although Scenario 2 as presented does not include national-phase entries in additional jurisdictions, the July 9, 2025 deadline for A4 and A5 creates a decision point that must be addressed. C&H recommends that OWS and Veltrano evaluate, by June 1, 2025 at the latest, whether entering any additional national phases (China, South Korea) is warranted based on commercial considerations. If the decision is to enter one or more additional jurisdictions, a supplemental budget authorization will be required.
4.  By November 2025: Decision on B4 and C3 JPO examination requests. The January 9, 2026 deadline provides adequate lead time for this decision, but it should not be deferred beyond November 2025 to allow for coordination with Nakashima & Togawa and preparation of the necessary filings.
VII. SCENARIO 3: MINIMUM DEADLINE PRESERVATION
A. Scope
Scenario 3 represents the narrowest possible reactivation approach. Under this scenario, Calderwood & Harkness would address only the two most imminent, irrevocable deadlines in the docket: the A1 Office Action response (March 9, 2025) and the B1 Restriction Requirement response (April 21, 2025). No other applications would receive affirmative prosecution activity; all remaining applications would remain in hold status.
Critically, the following deadlines would not be addressed under Scenario 3:
•  B3 EPO EESR Response (May 17, 2025): Not included. If the May 17 deadline passes without a response, the B3 application is at risk of deemed withdrawal under EPC Article 94(3), resulting in the loss of European patent protection for the electrode fabrication process.
•  A4/A5 PCT National-Phase Entries (July 9, 2025): Not included. Unselected jurisdictions (China, South Korea, etc.) would be permanently foreclosed after July 9, 2025.
•  B4/C3 JPO Examination Requests (January 9, 2026): Not included. Japanese examination deferred, with the January 9, 2026 deadline remaining outstanding.
The B2 divisional filing is also not inclu