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1020 Marsh Road, Suite 200
Menlo Park, California 94025
Direct Phone: 650.645.9010
Direct Fax: 650.687.8301
miku.mehta@procopio.com
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Partner

Miku H. Mehta

Partner

Admissions
California
District of Columbia
U.S. Patent and Trademark Office
Miku H. Mehta’s practice focuses on the preparation and prosecution of patent applications before the USPTO. Mr. Mehta has also worked on due diligence projects, including preparation of opinions in the areas of patentability, validity, infringement, and product clearance, as well as patent licensing. His areas of focus include the technology field such as computer software and hardware, networks, Internet-related application, environmental technologies, optics, mechanical engineering, business processes, and medical devices. Mr. Mehta’s practice also includes registration and renewal of trademarks. His practice also includes Export Control consultation, specializing in the issues faced by U.S. subsidiaries of overseas corporations.

Prior to joining Procopio, Mr. Mehta practiced as a partner at Sughrue Mion PLLC in Japan and Silicon Valley. Mr. Mehta also worked as an associate at Fleshner & Kim, LLP, and as a searcher at Prior Art Searches, Inc.

In addition to his extensive legal experience, Mr. Mehta was a lead developer for American Management Systems, Inc where he was involved in the proposal, design, software coding, testing, and user documentation stages for various federal budgeting and scientific information client/server application related to environmental and health agencies. Prior to that, he conducted facilities assessment, industrial facility technical analysis, and environmental impact statement for Resources Application, Inc. – where he also performed scientific analysis of federally regulated hazardous waste sites, including contamination migration and toxicity studies. Mr. Mehta has also directed corporate leadership and teambuilding training, conservation education and training, and recreation outdoors adventure services for Action Endeavor, Inc., a company that he founded, owned, and operated.


Education
  • JD, George Mason University School of Law
  • BS (Systems Engineering, Environmental Sciences), University of Virginia
Community Involvement
  • Licensing Executives Society
  • TiE Silicon Valley
  • American Intellectual Property Law Association
  • Keizai Society of Northern California
  • Silicon Valley Intellectual Property Law Association
  • Boy Scouts of America - Adult Leader

Recent News Coverage

Recent Publications
  • Co-author. “Protecting Confidences: Applicability of the Attorney-Client Privilege to Communications Made in Japan,” May 29, 2014.
  • "IP Provisions as They Might Apply to U.S. / Japan in the Trans Pacific Partnership Agreement," JIII, July 2013.
  • “Final USPTO Rules for First-to-File Provisions of the America Invents Act,” February 14, 2013.
  • Co-author. “The Supreme Court Has Granted Certiorari in the Uber-Important Bilski Case - Now What?” July 10, 2009.
  • Co-author. “Patent Prosecution and Enforcement Tips in View of In re Bilski,” March 27, 2009.
  • "Injunctive Relief in U.S. Patent Litigation after eBay v. MercExchange," (Japanese Version).
  • Co-author. “USPTO rules require new corporate strategies,” Americas IP Focus, 2007.
  • Co-author. “Top Three Things To Do Under Proposed PTO Rules,” Andrews Litigation Reporter, November 7, 2006.
  • “RIM v. NTP Analysis by Miku Mehta,” (Japanese Version).
  • “Inequitable Conduct: An overview and review of 2006 Federal Circuit Cases,” (Japanese Version).
  • Co-author. “Business Method Patents in the United States: A Legislative Response.”
  • Co-author. “Business Method Patents: A Judicial History and the Legislative Response.”
  • "Business Method Patents in the United States: A Judicial History & Prosecution Practice," AIPPI Japan, April 2004
  • "Expediting Patent Prosecution by the Special Treatment of Patent Applications," April 2003.
  • "Business Method Patents: A Judicial History And The Legislative Response," August 2002.
  • "Five Important Questions Relating To The Exclusion Of References Under 35 U.S.C. § 103(c)," February 2002.
Recent Seminars
  • “Patent Prosecution Bootcamp: Navigating the AIA,” IP Counsel Café, Palo Alto, CA, April 4, 2014.
  • "Strategic Use of Design Patents” at Ji2 Seminar in Osaka, Japan, May 23, 2013
  • “Patent Drafting and Prosecution Issues and Tips Under the New AIA Rules” Webcast at ThomsonReuters, May 15, 2013
  • Speaker on Panel “Patent Prosecution Bootcamp: Save Time, Save Money, Get it Right the First Time” at IP Counsel Café in Palo Alto, CA, April 25, 2013
  • Moderator of Panel on “America Invents Act: Application Drafting Under AIA” at IP Counsel Café in Palo Alto, CA, April 25, 2013
  • “Patentability Searches and Competitor Monitoring Strategies in View of AIA,” Webinar, Nationwide, April 17, 2013
  • “Patent Research Strategies in view of New Patent Challenge Procedures Under AIA” Webcast webinar with TT Consultants, April 16, 2013.
  • “America Invents Act: Final Rules on First-Inventor-to-File” at Japanese Patent Attorney Group - INFOPAT, Tokyo, Japan, February 24, 2013
  • “The Patent Game: Changing Values in Changing Times,” Keizai Society, Palo Alto, CA, September 20, 2012.
  • “Patent Prosecution Bootcamp,” IP Counsel Café, Palo Alto, CA, April 18-20, 2012.