Ernest Huang

Partner

Contact Me

Services & Specializations

Admissions

California;
US Patent & Trademark Office

Languages

Japanese;
Mandarin

Address

3000 El Camino Real | 5 Palo Alto Square Suite 400, Palo Alto, CA 94306

Office Tel.

650.645.9013

Fax

650.687.8304

Overview

Ernest counsels clients in patent prosecution and counseling, and intellectual property counseling. His practice focuses on the preparation and prosecution of patent applications in a broad range of technology areas in the electrical, mechanical and computer arts. Ernest has extensive experience prosecuting applications directed to semiconductor manufacturing and design, digital circuit design, storage systems, IoT systems, cloud and SAAS systems, machine learning, 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.

JD, The University of Toledo College of Law, 2008
BS (Electrical Engineering), University of California, Los Angeles, 2004

Author. “Overcoming Obstacles to Securing Patents for AI-Related Inventions,” October 3, 2024.
Co-Presenter. “Patent Considerations in View of the Nearshoring Trends to the Americas,” Procopio Perspectives podcast, September 20, 2024.
Co-presenter. “U.S. High-Tech Patent Prosecution Year in Review,” Berkeley Center for Law and Technology, webinar, June 7, 2023.
Co-presenter. “An Overview of Utility Models in ASEAN Countries,” Procopio Perspectives podcast, January 12, 2022.
Co-author. “Key Takeaways from the U.S. Supreme Court’s Patent Decision Regarding Prior Art and Secret Sales,” January 24, 2019.
Author. “Top Technology Innovations of this Decade and Next,” Silicon Valley Taiwanese American Industrial Technology Association News, Issue 006, Winter 2009.
Author. “Avoiding Potential Patent Pitfalls for Startups and IPOs,” Silicon Valley Taiwanese American Industrial Technology Association News, Issue 005, Fall 2009.
Author. “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.
Author. “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.

American Intellectual Property Law Association
Silicon Valley Taiwanese American Industrial Technology Association, Board Member and Legal Advisor

“Procopio law firm elevates five San Diego attorneys to partner,” San Diego Metro Daily Business Report, January 10, 2020.
Scurria, Andrew. “Procopio Hires 5 IP Pros to Plant Flag in Silicon Valley,” Law 360, November 27, 2012.