Our Practice

Patent Preparation and Prosecution Services

Chen Yoshimura LLP has an established patent prosecution practice. We perform all types of patent preparation and prosecution services ranging from rendering opinions on patentability to developing, managing, and expanding our clients’ domestic and international patent portfolios. Our lawyers are registered patent attorneys, who prepare and prosecute patent applications through all stages before the United States Patent and Trademark Office. We coordinate with foreign associates to file and prosecute applications in Europe and Asia Pacific. We also assist clients with inter parte and ex parte proceedings, such as patent reissue, reexamination, and interference. Our seasoned patent prosecution and litigation attorneys combine their skills to develop strategies and spot issues during the planning stages to help you create strong, enforceable patents. We are mindful of practical concerns such as industry demands and costs, and will work with you to develop a cost-effective and value-driven plan to best manage your patent needs.

  • Preparation and prosecution of patent applications through all phases before the USPTO and PCT
  • Ex parte and Inter partes patent reexamination procedures
  • Preparation and prosecution of trade and service mark applications through all phases before the USPTO
  • Trademark opposition and cancellation procedures before TTAB
  • Coordination with foreign associates for patent and trademark applications filed in Europe and Asia

Technology Licensing and Intellectual Property Transactions

Chen Yoshimura LLP assists small, emerging growth, mid-sized, and larger companies with all types of technology licensing and related intellectual property transactions. We perform due diligence reviews relating to technology licensing, asset acquisitions, and joint venture relationships. We negotiate and prepare patent and trademark licenses as well as asset purchase, material transfer, joint research and development, manufacturing, distribution, marketing, nondisclosure, private equity, and non-compete agreements. We also counsel and assist clients with establishing procedures for handling trade secrets, invention disclosures, and other confidentiality and intellectual property provisions for employee handbooks.

  • Negotiation and preparation of licenses and agreements, such as:
    • Patent License
    • Trademark and Brand Use License
    • Asset Purchase Agreement
    • Material Transfer Agreement
    • Manufacturing Agreement
    • Nondisclosure Agreement
    • Joint Venture Agreement
    • Private Equity Agreement

Intellectual Property and Commercial Business Litigation

Chen Yoshimura lawyers provide a wide range of intellectual property and complex business litigation services. Our attorneys handle patent, trademark, trade secret, unfair competition, breach of contract and other disputes involving intellectual property. From pre-litigation investigation and counseling to participating in mediations, arbitrations, as well as litigating at all levels of state and Federal Courts, our attorneys handle matters with an eye towards cost-savings and meeting our clients’ business goals. On larger patent litigation matters, we often involve other firms as co-counsel. We also serve as local counsel in California Federal Courts.

  • Pre-filing case assessment and due diligence
  • Patent litigation (Federal Court and International Trade Commission actions)
  • Trademark, trade secret, unfair competition and breach of contract litigation (state and Federal Courts)
  • General IP counseling and due diligence
  • Counseling on product clearance (freedom-to-operate opinions) and design around strategies
  • Counseling on liability (patent validity and non-infringement opinions)
  • Counseling on branding and clearance for trademark and logo selections