Team

Tarek Fahmi

Principal

Named one of the leading IP Lawyers in California by the Daily Journal, Mr. Fahmi is among the most experienced Patent Office litigation practitioners in the country. He has acted as lead counsel in more than two hundred inter partes and covered business method patent reviews before the USPTO Patent Trial and Appeal Board on behalf of both petitioners and patent owners. In addition to this specialty, his practice spans more than two decades worth of patent portfolio development and technology licensing on behalf of companies throughout the world and includes representations before the U.S. Court of Appeals for the Federal Circuit and U.S. District Courts.

In his role as an IP counselor, Mr. Fahmi has provided clients with in-depth assessments of their own as well as their competitors’ IP portfolios. Such reviews enable him to assemble a complete IP plan that will maximize protection of a client’s products or services. Whether it be for a solo inventor or a Fortune 100 company, Mr. Fahmi has developed forward-looking IP asset development and acquisition strategies that that take a broad view of how best to enhance a client’s business needs.

Just as important as acquiring IP assets is actively managing them. To that end, Mr. Fahmi assists clients in conducting infringement, validity and enforceability studies, freedom to operate analyses accompanying new product development, IP-related due diligence reviews in connection with proposed transactions, and negotiating patent licenses and technology transfer agreements to generate revenue and increase market penetration. All of these activities inform his advice to clients concerning how and where to file and maintain patent rights in order to protect their business goals.

In helping clients extract value from IP assets, Mr. Fahmi often acts as the lead investigating attorney to analyze IP portfolios of potential merger and acquisition targets, assist businesses in performing internal due diligence evaluations; and negotiate complex IP transactions. When it comes to helping clients with licensing matters, he provides strategic advice on structuring licensing programs to best meet clients’ needs and objectives, and also negotiate and prepare the licensing agreements. To ensure that IP assets remain safeguarded Mr. Fahmi routinely assists clients by performing sensitive information audits to help identify vulnerable proprietary information, developing information policy guidelines for use and control of confidential information, and drafting confidentiality and non-compete agreements for employees and strategic partners.

Prior to his career in law, Mr. Fahmi was a Combat Systems Engineering Officer in the Canadian Navy. He is a graduate of the University of Saskatchewan, College of Engineering (B.Eng., with distinction 1986), and Western State University, College of Law (J.D., summa cum laude 1993), where he was the Editor in Chief of the Western State University Law Review and class valedictorian.

Jonathan Tsao

Patent Agent

Jonathan is a registered patent agent who specializes in preparing and prosecuting patent applications. Representative technologies handled by Jonathan include software, hardware, computer networks, computer security, Internet applications, data storage, optical communication, semiconductor deposition, and semiconductor inspection. Jonathan also prosecutes matters in post-grant proceedings, including Patent Reexaminations and Inter-Partes Review proceedings.

Prior to joining the firm, Jonathan was a patent agent at SNR Denton US, LLP, where he was part of the Intellectual Property and Technology practice for over four years. In addition to prosecuting patent applications, Jonathan also worked in the patent litigation group where he recruited and managed several technical consultants.

Jonathan received a B.S., with highest honors, and an M.S. in Electrical Engineering and Computer Sciences from the University of California at Berkeley, where he was a Regents’ Scholar, National Science Foundation Fellow and member of Phi Beta Kappa. His areas of concentration were in wireless communications and signal processing.

Jonathan is also a talented musician, composing classical pieces for the piano in his spare time.  His goal is to have his music featured in the local radio stations one of these days.

Jennifer Stewart

IP Operations

As a patent paralegal professional with over 15 years experience, Jennifer effectively executes the myriad of tasks necessary to keep your valuable IP assets compliant with today’ s domestic and international IP laws. She coordinates and manages docketing, maintenance fees and annuities, preparing and filing documents with the US Patent and Trademark Office and analysis of complex patent portfolios to determine continuity and assignment status. Jennifer also ensures that your valuable patent assets are compliant with the prior art disclosure requirements of US patent law with the preparation of Information Disclosure Statements. Additionally, as an expert in international patent law procedure, Jennifer interfaces with international patent offices and attorneys in international jurisdictions to keep track of deadlines and ensure your internationally filed IP assets are compliant with all applicable laws and rules of relevant jurisdictions.