Miku H. Mehta
Partner
Admissions
California;
District of Columbia;
US Patent & Trademark Office
Address
3000 El Camino Real | 5 Palo Alto Square Suite 400, Palo Alto, CA 94306
Office Tel.
650.645.9010
Fax
650.687.8301
Overview
Miku advises clients in the U.S. and Asia on intellectual property, patent prosecution and counseling, as well as trademarks and copyrights. His practice focuses on the preparation and prosecution of patent applications, due diligence projects, including preparation of opinions in the areas of patentability, validity, infringement and product clearance, and patent licensing. Miku has extensive experience in technology including computer software and hardware, networks, internet-related applications, environmental technologies, optics, mechanical engineering, business processes and medical devices, as well as registration and renewal of trademarks and counseling on export control matters. He is the leader of Procopio’s Intellectual Property team and its Asia Pacific practice.
- Strategy 300 legal leader, IAM, 2023-2024
- Patent 1000, IAM, 2024
- IP Leader, WIPR, 2024
- JD, George Mason University School of Law
- BS (Systems Engineering, Environmental Sciences), University of Virginia
- Panelist. “Patent Prosecution Year in Review,” 25th Annual Berkeley-Stanford Advanced Patent Law Institute, Stanford, CA, December 6, 2024.
- Author. “Curver Luxembourg SARL v. Home Expressions Inc. 及びIn re Surgisil から考察する米国意匠特許法に基づく出願手続と権利行使,” AIPPI Japanese Journal, Vol 69, No. 6, June 2024.
- Panelist. “Shifting Landscape and Challenges in Global IP Portfolio Building,” 2024 IP Counsel Cafe Annual Palo Alto Meeting, Palo Alto, CA, May 8, 2024.
- Keynote speaker. “The Future of Mobility,” GABA Northern California and Keizai Silicon Valley, Palo Alto, CA, March 12, 2024.
- Panelist. “Patent Prosecution Development (including AI-related issues) in the United States, Europe, and Japan,” APABA Silicon Valley, Palo Alto, March 6, 2024.
- Speaker. “AI for Mass Outreach of IP to Innovators,” 2024 World Intellectual Property Forum, Bengaluru, India, January 12, 2024.
- Moderator. “Claim drafting considerations: Trends in divided and joint infringement,” 24th Annual Berkeley-Stanford Advanced Patent Law Institute, Stanford University, Palo Alto, CA, December 8, 2023.
- Speaker. “Transforming IP Workflows,” XLSCOUT with NGB Corp. IP Research Institute, webinar, September 10, 2023.
- Co-presenter. “U.S. High-Tech Patent Prosecution Year in Review,” Berkeley Center for Law and Technology, webinar, June 7, 2023.
- Moderator. “What You Need to Know About the Unified Patent Court and Unitary Patent,” Procopio Perspectives Podcast, May 8, 2023. Transcript.
- Author. “How Patent Applicants Can Prepare For Electronic Issuing,” Law360, April 6, 2023.
- Moderator. “Patentability of Computer Implemented Inventions in Japan and U.S.” Bay Area CHIZAI, Santa Clara, CA, March 8, 2023.
- Author. “U.S. Patents Will Soon Be Issued Electronically: What Does This Mean to You?” February 28, 2023.
- Panelist. “Patent Grace Period Considerations in Australia, Japan, South East Asia and the U.S.,” podcast, February 21, 2023. Transcript.
- Co-presenter. “Greater Speed and Efficiency: Steps IP Offices Around the World Are Taking to Streamline the Patent Process,” Procopio Perspectives podcast, December 20, 2022. Transcript.
- Panelist. “What next: After-final practice with continuations and appeals,” Berkeley-Stanford Advanced Patent Law Institute, Stanford, CA, December 9, 2022.
- Author. “Obviousness Considerations Under U.S. Design Patent Law in view of Campbell Soup Company, Campbell Sales Company, Trinity Manufacturing , LLC v. Gamon Plus, Inc.,” AIPPI Journal (Japan), August 2022. (in Japanese)
- Co-author. “Expedited Examination Programs at the USPTO: What You Need to Know to Secure Your Patent Promptly,” August 16, 2022.
- Co-presenter. “Vietnam and Patent Protection: Observations, Developments and Strategies,” podcast, July 26, 2022.
- Co-author. “USPTO Introduces Climate Change Mitigation Pilot Program,” June 30, 2022.
- Co-presenter. “The Latest Sanctions & Export Controls from Arising Global Tensions,” Procopio hybrid seminar, May 24, 2022.
- Co-presenter. “Shifting Foreign Filing Strategies,” 2022 IP Counsel Cafe annual meeting, May 18, 2022.
- Co-presenter. “Singapore IP Strategy,” IP Counsel Cafe podcast, April 18, 2022.
- Co-presenter. “Willful Patent Infringement: Understanding and Preparing for Claims,” Procopio Perspectives Podcast, January 24, 2022.
- Co-presenter. “Design Patent Protection in the U.S. and Japan,” Bay Area CHIZAI webinar, November 18, 2021.
- Co-presenter. “Latest Legal Issues In The U.S. and China In The New Biden Era – Data Privacy and Export Control Laws,” an HHP and Wolters Kluwer webinar, January 21, 2021.
- Co-presenter. “Episode 12: Building IP Departments – Part 1,” IP Counsel Cafe Coffee Break Podcast, December 14, 2020.
- Co-presenter. “Complying with U.S. Export Controls in an Unpredictable Global Marketplace.” Webinar, October 21, 2020. Video and PowerPoint.
- Co-presenter. “How to Best Protect Yourself When a Customer Files Bankruptcy,” Podcast, August 24, 2020.
- Co-presenter. “Patent Troll Litigation Is On The Upswing,” Procopio Perspectives Podcast, June 26, 2020.
- Co-author. “U.S. Commerce Department Bans Export of Certain Self-Driving Vehicle Software,” January 6, 2020.
- Co-author. “Recent Court Decisions Drive Strategic Approaches to Pursuing Sound Patent Protection,” September 10, 2019.
- Co-author. “U.S. Limits and Extends Temporary General Export License Related to Huawei Technologies,” August 20, 2019.
- Co-presenter. “Can I Still Export Semiconductor, Telecommunication, Or AI Technologies to Huawei?,” Procopio Perspectives Podcast, May 28, 2020.
- Co-author. “Next Steps for Companies Following the Latest U.S. Government Export Ban,” May 31, 2019.
- Moderator. “Foreign Prosecution: Considering Different Countries & Cost Cutting Strategies,” IP Counsel Café, Palo Alto, CA, May 7, 2019.
- Co-author. “Where Do Patent Owners Fit In The Current Federal Circuit-USPTO Patentability Divergence?,” April 30, 2019.
- Co-author. “Key Takeaways from the U.S. Supreme Court’s Patent Decision Regarding Prior Art and Secret Sales,” January 24, 2019.
- Author. “Significant New Patent Office Rule Reshapes Strategic Approaches to Patent Claim Challenges,” October 11, 2018.
- Author. “How Increasing Federal Circuit Patent Scrutiny Under 35 USC 112 Impacts Applicants and Owners,” August 29, 2018.
- Co-author. “Approaches to Protect Designs Effectively in Japan – And a Few Comparisons with US Design Practice,” December 20, 2017.
- Author. “Cuozzo Speed Technologies, LLC,” (AIPPI-Japan) Journal, Vol.62, No.5, pages 422-436 (July 2017).
- Author. “Ethicon Endo-Surgery v. Covidien – Case Review and Practical Considerations” (AIPPI-Japan) Journal, Vol. 61, No. 4, pages 328-339 (April 2016).
- Author. “International Association for the Protection of Intellectual Property of Japan” (AIPPI-Japan) Journal, Vol. 60, No. 7, pages 611-621 (July 2015).
- Speaker. “Patent Prosecution Workshop – Getting Your Claims Through the Patent,” IP Counsel Cafe, Palo Alto, CA, April 24, 2015.
- Co-author. “Accelerating IP filing while ensuring quality: The masterpiece challenge,” Inside Counsel, February 13, 2015.
- Panelist. “Managing Risk in a Changing IP Landscape,” Silicon Valley IP Forum, Palo Alto, CA, October 29, 2014.
- Co-author. “Protecting Confidences: Applicability of the Attorney-Client Privilege to Communications Made in Japan,” May 29, 2014.
- Speaker. “Patent Prosecution Bootcamp: Navigating the AIA,” IP Counsel Café, Palo Alto, CA, April 4, 2014.
- Author. “IP Provisions as They Might Apply to U.S. / Japan in the Trans Pacific Partnership Agreement,” JIII, July 2013.
- Speaker. “Strategic Use of Design Patents” at Ji2 Seminar in Osaka, Japan, May 23, 2013
- Speaker. “Patent Drafting and Prosecution Issues and Tips Under the New AIA Rules” Webcast at Thomson Reuters, May 15, 2013
- Speaker. “Patent Prosecution Bootcamp: Save Time, Save Money, Get it Right the First Time” at IP Counsel Café in Palo Alto, CA, April 25, 2013.
- Moderator. “America Invents Act: Application Drafting Under AIA” at IP Counsel Café in Palo Alto, CA, April 25, 2013.
- Speaker. “Patentability Searches and Competitor Monitoring Strategies in View of AIA,” Webinar, Nationwide, April 17, 2013
- Speaker. “Patent Research Strategies in view of New Patent Challenge Procedures Under AIA” Webcast webinar with TT Consultants, April 16, 2013.
- Author. “Final USPTO Rules for First-to-File Provisions of the America Invents Act,” February 14, 2013.
- Speaker. “America Invents Act: Final Rules on First-Inventor-to-File” at Japanese Patent Attorney Group – INFOPAT, Tokyo, Japan, February 24, 2013
- Speaker. “The Patent Game: Changing Values in Changing Times,” Keizai Society, Palo Alto, CA, September 20, 2012.
- Speaker. “Patent Prosecution Bootcamp,” IP Counsel Café, Palo Alto, CA, April 18-20, 2012.
- South Asian Bar Association of Northern California, Board Member
- Asian American Pacific Bar Association of Silicon Valley
- Keizai Society of Northern California
- Silicon Valley Intellectual Property Law Association
- Boy Scouts of America, Adult Leader
- Johnson, Emily. “Procopio Atty Who Worked At Oracle To Lead IP Litigation Team,” Law360, June 11, 2024.
- Wingrove, Patrick. “The Stranger’s Guide On When to File Patent Continuations,” Managing IP, May 10, 2021.
- Davis, Ryan. “IP Owners Have Usually Found Ally In Trump Administration,” Law360, December 11, 2020.
- Pierce, Emmet. “Knowing the Twists and Turns IS Key to Navigating IP Course,” San Diego Business Journal, November 3, 2014.
- “Q&A With Procopio’s Miku Mehta,” Law360, July 22, 2013.
- Ruiz, David. “EIP Opening in San Diego,” Daily Journal, June 5, 2013.
- Scurria, Andrew. “Procopio Hires 5 IP Pros to Plant Flag in Silicon Valley,” Law360, November 27, 2012.
