Here we answer some of the common questions we get, we have tried to arrange them in logical question groups.

USPTO Type Questions:

USPTO Stands for United States Patent and Trademark Office

Boutique law firms are firms that tends concentrate and have specific skills in an area of law. We cannot use the word “specialize” because the California State Bar has hijacked the word “specialize” to indicate special training in an area. You can see here https://www.calbar.ca.gov/Attorneys/Legal-Specialization the only specializations that the California State Bar allows.

Absent from that list is patent law, however to practice before the USPTO (United States Patent and Trademark Office) you must pass the USPTO Patent Bar exam. If you are a patent agent it means you passed the Patent Bar but not a State Bar as an attorney. A patent attorney has passed both the State Bar and is an attorney and passed the Patent Bar. Heimlich Law practices primarily in patents and thus the “Heimlich Law, PC – Boutique Intellectual Property Firm.

Company Position Type Questions:

These Questions Tend to Be a Minefield and Rarely Have Anything to Do With Work Quality, Competence, Etc. However, Here’s Our Answers About How We Care for the Environment.

Actions speak louder than words, so here’s what we’ve done.

1. Lighting – that is use of electricity for lighting. All offices, conference rooms, and front lobby are wired so that we have full lighting and half lighting switches. That is, we can cut electricity usage by one half. The only rooms where we do not have half lighting are the kitchen, storage, and restroom areas which is for safety. All lights are turned off after the last person leaves.
2. Outside offices have double tinted windows to allow natural light in.
3. Our HVAC system does not use gas.
4. Remote work is allowed.
5. We reuse notebooks if needed when we can.
6. We take old reference material that has no client information and cut and use as scratch pads.
7. We use excess nighttime computer resources to help search for disease cures.
8. This may be the most controversial today (in the future it’ll be a no brainer). You MUST drive an EV to be employed by us. Additionally, once every 10 years of work an employee gets a new EV from us.

Company Confidential Measures:

That’s a broad question. Here goes:
For shredding documents – we do that on-site (paper, hard disks, CD, DVD, USB drives) We have double locked storage for paper documents.
For digital we have disk level encryption on both hard drives and USB drives.
Some of our backups are in another area of the office.
We do daily mirror backups of main hard drives.
We update regularly and scan systems for malware, viruses, root kits, etc.

We avoid it. It is not used unless a client or another law firm wants to transfer a lot of information and even then, it must be separately encrypted. After the transfer is completed, we delete the information or unlink from a shared cloud account.

We can use some anonymous transfer sites (that we have used previously).

Our default is AES-256.

Company Past Work:

For most foreign countries they require a patent practitioner to live in that country, therefore we need to work with foreign associates to prosecute patents in that country or region. However, be assured we get any translations needed and prepare the responses in coordination with our foreign associates. If the country you want is not on the list, we’ll find a foreign associate.
Here are some of the countries where we have prosecuted patents:

  • Australia
  • Canada
  • China
  • Europe is considered a region (EPO). Countries (member states) listed here:
  • France
  • Germany
  • Hong Kong ((Hong Kong Special Administrative Region of the People’s Republic of China))
  • India
  • Ireland
  • Israel
  • Japan
  • Mexico
  • New Zealand
  • Republic of Korea(aka South Korea)
  • Singapore
  • United Kingdom (aka Britain, England)
  • United States of America (obviously)

Company Taking Over Work:

It depends. Here are some of the factors we consider.
1. Conflict – first we have to determine that there is no conflict with current or prior clients. That is, for example, if your invention is on switching power supplies, then we have a conflict and will tell you and refuse to take the case.

2. Time – if you contact us the day before, say a 6 month hard deadline, then no, we decline your matter.

3. $$$ – you need to consider that for us to take over, for example, responding to a USPTO office action we have to read and understand the invention, read and understand what the prior attorney wrote and claimed, read any prior attorney responses, and finally read the rejection and respond. Necessarily a lot of this work is simply getting up to speed on the case, which for the current/former attorney, is not needed. What this means is that it may cost more for us to do it than the current attorney. On the other hand, if your prior attorney becomes permanently indisposed, then you may have little choice but to have another attorney take over.

It really depends. As noted above in the patent work, we need to check for conflicts, timing, and in litigation in particular $$$. Patent litigation is the sport of kings, meaning it can get very expensive, very fast because of research, experts, etc. As a general approach we need company buy in. That means time permitting we need to meet with the company president and discuss real outcomes. Passing that we want to next present to the board of directors. From there, before we leave the board room, we ask the board to vote for/against moving forward. When the vote is done if it’s not 100% for moving forward, we thank you for the opportunity and decline. We need solid buy in.

Clients and Technologies:

Yes, we do. We work with Fortune 50 to solos.

You can search and see what we’ve worked on previously at the USPTO. The only areas where we need outside assistance on are chemicals used for other than coatings and biological sequences. Our main expertise is in electronics, software, computers, RF, mechanical, encoding, ICs, semiconductor processing, etc.

Very rarely. We would first need to check for conflicts with existing and prior clients. Then we will very carefully look at your invention. You may contact us, but honestly we are very wary of someone with a great idea that is unable to raise funds considering all the sources that are available.

Sorry, no. This you need to do on your own. We can give you tips but you have to do the groundwork.


More detailed explanations may be found in our MOPO® section.

Provisional, non-provisional (also call Utility patent applications), and Design patent applications.

Yes, see our Brief Notes on Patent Assignment. Licensing agreements are created for each situation. If you’re a small company licensing to a large company, don’t waste your time and money crafting a license agreement first as the large company will likely circular file it. Ask for the large company licensing agreement and your attorney (hopefully us) can work from that.

Yes, however the outcome depends on a large number of factors. In order to sue in Federal Court for infringement, you first need a patent that was granted because just an application will not be sufficient. Federal Courts have exclusive jurisdiction on patent matters, you cannot sue for patent infringement in State Courts. Then a very very detailed analysis needs to be done comparing your claims against the alleged infringing process or apparatus. Then it’s off to the races and expenses. Please talk to us before you file a lawsuit, we may be able to give you some tips depending on your patent and the infringers.

Yes we do as well as litigation opinions and claim construction charts for Markman hearings.

Unfortunately no.  While we have a very high success rate in getting patents granted, it’s the USPTO (US Patent and Trademark Office) that has the final say.  That said we have appealed many cases to the Patent Trial and Appeal Board (PTAB) and have prevailed in a good number, overcoming the examiner’s rejections and getting patents granted.

No guarantee.  While we have a very high success rate in getting trademarks approved, it’s the USPTO (US Patent and Trademark Office) that has the final say.  Some of their trademark attorneys can be challenging.  The best way to secure a trademark is to have a unique name that does not sound like an existing mark.  The standard is a consumer “likelihood of confusion”, so make it unique.  Any idea what product/service “onbtecy” is for?  No?  Then it’s likely to be approved.

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