1117 S California Ave, Suite 200
Palo Alto, CA 94304
Ernest Huang counsels clients in patent prosecution and counseling, and intellectual property counseling. Ernest’s practice focuses on the preparation and prosecution of patent applications in a broad range of technology areas in the electrical, mechanical and computer arts. He has extensive experience prosecuting applications directed to semiconductor manufacturing and design, digital circuit design, connectors, printed circuit board design and storage media.
- Filed and prosecuted patent applications from initial filing to allowance/abandonment, including conducting examiner and inventor interviews, drafting patent applications and responses to office actions in a variety of technology areas, including semiconductors (wafer manufacturing, circuit design, etc.), software encryption schemes and other electrical and software technologies.
- Corresponded with foreign associates for applications filed domestically from foreign clients and abroad for domestic clients, including prosecution of PCT applications and overseeing applications filed abroad. Drafted domestic applications to conform with both USPTO and JPO requirements.
- Conducted export control analysis for potential invention disclosures on request of clients to ascertain need for export control licenses.
- Corresponded with managers of large Japanese companies on different intellectual property issues, from patent law to assisting in creating cohesive intellectual property strategies to identify patentable technology areas, including opinion work and due diligence. Partially conducted in Japanese.
- American Intellectual Property Law Association
- Silicon Valley Taiwanese American Industrial Technology Association – Board Member, Legal Advisor
- JD, The University of Toledo College of Law, 2008
- BS (Electrical Engineering), University of California, Los Angeles, 2004
- Scurria, Andrew. “Procopio Hires 5 IP Pros to Plant Flag in Silicon Valley,” Law 360, November 27, 2012.
Ernest has given educational seminars to engineers and researchers of client companies in regards to patent law, general patent procedures and invention disclosers. He has also presented a patent boot camp for in-house counsel with regards to the various aspects of patent prosecution.
- Co-author. “Key Takeaways from the U.S. Supreme Court's Patent Decision Regarding Prior Art and Secret Sales,” January 24, 2019.
- “Top Technology Innovations of this Decade and Next,” Silicon Valley Taiwanese American Industrial Technology Association News, Issue 006, Winter 2009.
- “Avoiding Potential Patent Pitfalls for Startups and IPOs,” Silicon Valley Taiwanese American Industrial Technology Association News, Issue 005, Fall 2009.
- “Protecting Your Intellectual Property: Part II: Developing Leveraging the Patent Portfolio with a Shoestring Budget,” Silicon Valley Taiwanese American Industrial Technology Association News, Issue 004, Summer 2009.
- “Protecting Your Intellectual Property: Part I: Developing Your Patent Portfolio with a Shoestring Budget,” Silicon Valley Taiwanese American Industrial Technology Association News, Issue 003, Spring 2009.