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Top-Rated Orange County Patent Lawyer | Helping Inventors in Orange County, Los Angeles County & Beyond | OC Patent Lawyer, Irvine CA

Orange County Patent Attorney

(949) 433-0900
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Practice Areas

I work with first-time inventors, serial inventors, and even in-house attorneys throughout Southern California and beyond. Below is an overview of my main legal services, any of which can help you secure your utility patent or design patent or the other intellectual property surrounding it.

 

Patent Law

Utility Patent Prosecution

End-to-end drafting, filing, and prosecution of utility patent applications covering the functional aspects of mechanical, electrical, chemical, and software inventions. Includes claim strategy, specification drafting, figure preparation, filing with the USPTO, and responding to examiner rejections through allowance.

Design Patent Prosecution

Protection for the ornamental appearance of a product. Faster and less expensive than utility patents, and particularly valuable in consumer goods, packaging, and products where visual identity drives purchase decisions. 

Provisional Patent Applications & Filing Strategy

Drafting provisional applications that meaningfully lock in a priority date. Counseling on when a provisional is the right tool, when to skip it and go straight to non-provisional, and how to sequence multiple provisionals that mature into a single utility filing.

Software & AI Patent Strategy (Alice / Section 101)

Claim drafting and specification strategy designed to survive Alice / Section 101 subject-matter rejections. Focus areas include technical-improvement framing, hardware anchoring, non-obvious data structures, and machine-learning pipeline claims. Relevant for SaaS platforms, AI/ML tooling, fintech, and any software-implemented invention.

Patent Office Action Response

Preparing written responses to USPTO rejections (novelty, obviousness, subject matter, written description, enablement, and formal objections). Includes examiner interviews where productive, strategic claim amendments, and appeal when warranted. Available on a fixed-fee-per-response basis.

Continuation Strategy & Patent Portfolio Building

Building a family of related patents from a single disclosure through continuation, divisional, and continuation-in-part filings. Used to keep prosecution open against evolving competitor products, carve out broader and narrower claim scope, and maintain pendency for strategic use.

International & PCT Filing

Filing Patent Cooperation Treaty (PCT) applications to preserve international rights for up to 30 months from the earliest US filing, followed by national-phase entry in target countries. Counseling on country selection based on manufacturing footprint, target markets, and enforcement practicality.

Patent Freedom-to-Operate & Infringement Analysis

Evaluating whether a planned product or feature infringes existing patents, and providing written opinions used for investor diligence, product launch decisions, and design-around engineering. Also used defensively when a competitor has threatened or filed suit.

 

Trademark Law

Trademark Clearance & Availability Searches

Pre-filing searches across the USPTO register, common-law uses, and state registrations to assess whether a proposed mark is available and the likelihood of registration. Deliverable as a written report with a clear recommendation: proceed, narrow the goods/services, or rebrand.

Trademark Registration & Prosecution

Filing and prosecuting federal trademark applications before the USPTO, including goods/service description drafting, class selection, specimen preparation, and management of the application through publication and registration.

Trademark Office Action Response

Responses to USPTO refusals and objections, including likelihood of confusion (Section 2(d)), descriptiveness (Section 2(e)), specimen objections, and identification-of-goods requirements. Often resolved with written argument, sometimes with amendment or supplemental specimens.

Likelihood-of-Confusion & Opposition Matters

Analysis of confusing similarity between marks, whether to overcome a USPTO refusal, evaluate a third-party threat, or decide whether to oppose a pending application. Includes preparation of Letters of Protest, Oppositions, and Petitions to Cancel before the TTAB when circumstances warrant.

International Trademark Filing

Filing under the Madrid Protocol from a US base application or registration to cover many foreign jurisdictions through a single consolidated filing, and coordinating national filings where Madrid is not the best fit.

 

IP Strategy & Enforcement

Cease-and-Desist & IP Enforcement

Drafting and sending cease-and-desist letters, platform takedown filings (Amazon Brand Registry, DMCA equivalents for TM), and coordinating litigation counsel when federal court action becomes necessary. Also represents clients on the receiving end of cease-and-desist letters.

IP Assignments, NDAs & Contractor Agreements

Drafting and reviewing the core IP contracts: invention assignment agreements, non-disclosure agreements, work-for-hire and contractor IP clauses, and joint-development agreements. Critical before disclosing to investors, engaging contractors, or onboarding employees.

Competitor Monitoring & Portfolio Strategy

Ongoing watch services for competitor patent and trademark activity, landscape analyses, and strategic guidance on where to build or defend patent claims. 

Entity Formation for IP Holding

Structuring IP ownership through dedicated holding entities to separate asset risk from operating risk, simplify licensing, and enable cleaner M&A treatment. Typically coordinated with the client’s corporate counsel or CPA.

Initial Consultations & IP Audits

Flat-fee ($500) initial consultations for both patent and trademark matters, plus structured IP audits for companies that have accumulated IP assets without a coherent strategy. The audit output is a written roadmap: what is protected, what is exposed, what to file, and what to let lapse.

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Contact

James Yang
OC Patent Lawyer
2372 Morse Ave., Suite #178
Irvine, CA 92614
Tel: (949) 433-0900

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From our offices in Irvine and Anaheim, California, we serve clients throughout Orange County, Los Angeles, Long Beach, the Inland Empire (e.g. Corona and Temecula), and throughout SoCal.

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