Services

New Clients:

We are happy to accept new clients, however, we owe a duty first to our existing clients. Therefore, before representation may begin, we will first conduct a conflict check and then send you an engagement letter establishing that you are a client of the firm, BSTZ, and that we represent your legal interests to the extent and scope specified.

If you are facing a critical deadline, such as bar dates, public disclosure, etc., then please contact me directly to see if it is possible to expedite this process.

Location:

Spencer travels frequently to visit existing and potential clients, especially to the California Bay Area. Spencer will gladly travel to your physical location for inventor disclosure meetings as well as other needs at the request of clients. Spencer does not charge his clients for the cost of travel nor does Spencer bill any amount for “travel time.”

Typical I.P. Services:

  • Preparation of new non-provisional utility patents;
  • Preparation of new provisional patents;
  • Preparation of continuation/divisional applications and claim sets;
  • Preparation of Continuation-In-Part (CIP) applications;
  • Preparation of Patent Cooperation Treaty (PCT) International patent applications;
  • Patent litigation support and analysis;
  • Patent infringement analysis;
  • Patent validity analysis;
  • Prior art searching;
  • Copyright infringement analysis for software based claims (on behalf of established clients only);
  • Trademark services (will be referred to BSTZ trademark experts);
  • Response to USPTO Office Actions, including:
    • handling of 35 U.S.C. § 101 rejections for non-statutory subject matter,
    • handling of 35 U.S.C. § 102 anticipation rejections,
    • handling of 35 U.S.C. § 103 obviousness rejections,
    • handling of 35 U.S.C. § 112 disclosure, support, enablement, and clarity rejections,
    • handling of Examiner’s objections due to informalities,
    • handling of objections to, and formalization of, patent drawings (utility patents only),
    • handling of double patenting rejections;
  • Prosecuting foreign-filed patent applications through local foreign counsel (e.g., EPO, JP, CN, AU, CA, etc.);
  • Strategic and tactical guidance for new and existing patent portfolios;
  • BPAI appeal Practice, including:
    • guidance on when and whether to file an appeal,
    • handling negotiations with patent Examiner prior to appeal,
    • Preparation of pre-appeal brief when advisable,
    • handling the notice of appeal,
    • preparation of the appeal brief to the BPAI,
    • preparation of a response to the Examiner’s answer and counseling whether or not such a reply is advisable;
  • Final Rejection Practice, including:
    • counseling regarding considerations for appeal, abandonment, RCE, amendment, etc.,
    • response to Examiner using the After Final Expedited Procedure, when appropriate,
    • response to Examiner with RCE to remove finality,
    • handling of after-final interviews, when appropriate;
  • Examiner’s interviews as initiated by the USPTO or at Applicants’ request;
  • Restoration of unintentionally abandoned patent applications when legally permissible;
  • Preparation and recordation of patent assignments with the USPTO;
  • Preparation and filing of inventors’ declarations, oaths, and POAs;
  • Preparation and handling of USPTO petitions;
  • Legal research pertaining to intellectual property law (on behalf of established clients only).

Other I.P. Services:

The above list is not comprehensive. If you have other intellectual property related issues, feel free to contact Spencer directly.