THE IP LAW FIRM MODEL
“Working with Varun for patent applications was a great experience. His ability to understand the details of the technical solution, get to the crux of the idea, and write a well formed claim statement while we were discussing the details of the solution is simply amazing.”
- Venkatraju T V
The claim set of any patent defines the focus of the patent as well as dictates the patent's value. Accordingly, a strong claim foundation must be established before drafting a complete patent application.
Through our own in-house experience, we have learned that the strategic, in-depth knowledge of in-house counsel is the key to generating a strong claim foundation that is broad, correctly focused, and aligned with client strategy.
The Invoke two-chair model is designed to incorporate this strategic, in-depth knowledge of the in-house counsel into the claims during the initial invention disclosure meeting itself. The complete patent application is then built upon this strong claim foundation to deliver unprecedented patent quality.
1. A highly specialized senior attorney drafts a full claim set in real-time during the initial invention disclosure meeting while a firm associate leads the discussion.
2. In-house counsel and/or inventors provide feedback on the claims immediately following the discussion to ensure the claims are correctly focused and aligned with company strategy.
3. The firm associate then completes the draft of the patent application based on the client-approved claims.
Invoke was founded by Mr. Varun A. Shah, a highly experienced Intellectual Property attorney practicing in Silicon Valley for over a decade. Mr. Shah has served clients ranging from start-ups to Fortune 100 tech companies including Dolby, Oracle, Cisco, Netflix, TiVo, Fanvana, Yahoo!, Intuit, Condusiv Technologies, Improvised Electronics, Schlumberger, and Sun Microsystems (prior to Oracle acquisition).
Formerly, Mr. Shah served in-house as the Global Head of Intellectual Property development at Aruba Networks (acquired by HP for $3B). At Aruba Networks, Mr. Shah focused on IP strategy and built a patent program recognized by the Wall Street Journal: “...Aruba Networks Inc had the largest increase in [patent] rank, 22 spots to now rank 36th due to an increase in both patents and impact.”
Mr. Shah is fluent in Gujarati and conversational in Hindi.
Ms. Yau concentrates her practice on drafting and prosecuting patents in the computer software and hardware fields. Her sub-specialities include Internet of Things, wearable devices, web and mobile applications, signal processing, and liquid crystal displays. Further, Ms. Yau often volunteers for organizations focusing on civil rights issues and immigration law.
Ms. Yau has broad Intellectual Property experience in both patent prosecution and patent litigation. Her experience includes validity analysis, infringement analysis, and arguing before district and appellate courts. In addition, Ms. Yau clerked for the Honorable Garland E. Burrell at the U.S. District Court for the Eastern District of California, working on intellectual property, real property, contracts, and civil rights matters.
Ms. Yau earned her Juris Doctorate from the University of California, Los Angeles (UCLA) in 2006. During law school, Ms. Yau served as a Managing Editor for both the UCLA Law Review and the Asian Pacific American Law Journal. Ms. Yau earned her B.S. degree in Electrical & Computer Engineering, magna cum laude in 2003 from Cornell University.
Ms. Yau is fluent in Cantonese and conversational in Mandarin.
Mr. Brandt concentrates his practice on drafting and prosecuting patents in the computer software and hardware fields. His sub-specialties include telecommunications, enterprise software, electrical systems, business methods, speech recognition and signal analysis, networking protocols, cryptography, consumer electronics, embedded systems, database models and e-commerce.
Mr. Brandt also assists clients in the preparation of opinions of clearance, non-infringement, and invalidity. Mr. Brandt has authored and published Compulsory Licenses in the Aftermath of eBay Inc. v. MercExchange, L.L.C.: The Courts’ Authority to Impose Prospective Compensatory Relief for Patent Infringement, 17 Fed. Cir. B.J. 699 (2008).
Mr. Brandt earned his Juris Doctorate, cum laude from the George Mason University in 2009. During law school, Mr. Brandt served as the Notes Director for the Federal Circuit Bar Journal. Mr. Brandt was also a member of both the J. Reuben Clark Law Society and the BYU Management Society. Prior to law school, Mr. Brandt worked as a web developer, software engineer, and technical editor. Mr. Brandt earned his B.S. degree in Computer Engineering, with a minor in Mathematics from the Brigham Young University in 2006. At Brigham Young University, Mr. Brandt was selected as a Finalist in the IEEE Student Paper Contest.
Mr. Brandt is fluent in Portuguese.
Mr. Ponsford concentrates his practice on drafting and prosecuting patents in the field of computer science. Mr. Ponsford has served a wide variety of clients ranging from start-ups to fortune 100 tech companies, including Oracle, Cisco, Yahoo, Netflix, TiVo, Dropbox, and Airware. His sub-specialties include a variety of technologies, including telecommunications, enterprise software, network and data security, speech and language recognition, operating systems, networking protocols, video editing and processing, audio systems, health and wellness software, navigation systems, machine learning, cloud-based systems, data storage systems, e-commerce, and aerial drone flight systems. Mr. Ponsford is an experienced patent portfolio manager. He works diligently to ensure that his clients receive high quality service.
Prior to becoming a patent attorney, Mr. Ponsford worked for 6 years as a software engineer developing complex satellite software systems for Raytheon Company and General Dynamics.
Mr. Butt concentrates his practice on preparing and prosecuting patents in the computer software and hardware fields. His sub-specialties include e-commerce, telecommunications, computer processors, semiconductor device software, network interface controllers, payment processing systems, mobile applications, social networking systems, software-as-a-service platforms, web applications, network security, embedded systems, graphical user interfaces, augmented reality systems, electronic gaming machines, cloud storage and services, automotive audio control systems, entertainment systems, solar power device control systems, and baggage screening (CT scan) devices.
In addition to handling an array of complex technical inventions, Mr. Butt excels at identifying and overcoming patent eligibility (§ 101) issues for business methods at all stages of patent preparation and prosecution.
Prior to becoming an attorney, Mr. Butt was a senior analyst for a global consulting company, where he gained significant technical experience in the areas of website security, database management, directory services, and enterprise software management.
Mr. Butt earned his Juris Doctorate from DePaul University College of Law with a patent law certificate in 2014. He participated in the Giles Rich Moot Court Competition and was president of the DePaul IP Law Society. He was on the Dean's List for two semesters and won the CALI Award for the best grade in the IP for Corporate Transactional Lawyers course. He also attended the Stanford University, Hoover Institution, Summer Teaching Institute on the Economics and Politics of Regulation. He graduated from DePaul University with a B.S. in Computer Science in 2005.
Mr. Hicks concentrates his practice on preparing and prosecuting patents in the computer software and hardware fields. He has particular knowledge in the fields of networking, network security, mobile applications, augmented and virtual reality systems, cloud storage and services, tape-based storage systems, solid state memory storage systems and devices, and software-as-a-service. Mr. Hicks has been a practicing patent attorney for over ten years managing multiple client dockets in a range of technical fields and ranging in size from small start-ups to global multi-nationals.
Prior to attending law school, Mr. Hicks worked as a Control Systems Engineer for a global construction firm specializing in biotechnology installations and as an Applications Engineer for a large industrial controls company in the Midwest.
Mr. Hicks earned his Juris Doctorate from Santa Clara University School of Law with a High Tech Law certificate in 2008. He earned the CALI Award for highest grade in two courses in his last year of law school. Mr. Hicks attended the University of Iowa for his undergraduate studies, graduating in 2000 with a B.S. in Mathematics and a B.S.E. in Chemical Engineering.
Mr. Bastuba focuses his practice on drafting and prosecuting patents in the computer software and hardware fields. His sub-specialties include circuit design and fabrication, graphics hardware and software, smart home devices, wired and wireless communication systems hardware and software, database structures, and e-commerce methods.
In addition to his experience preparing and prosecuting applications for U.S., foreign, and international patents, Mr. Bastuba has experience with post-grant proceedings before the U.S. Patent and Trademark Office and in patent litigation matters. Mr. Bastuba also has experience working with inventors to determine patentability and points of novelty of inventions.
Mr. Bastuba earned his Juris Doctorate from the DePaul University College of Law in 2007. Mr. Bastuba earned his B.S. in Computer Engineering from the University of Illinois at Urbana-Champaign in 2003.
Mr. Smith’s practice focuses on patent preparation and prosecution in a variety of fields including software, nanotechnology, and materials science. Mr. Smith also advises clients regarding patent portfolio strategy, portfolio management, and patent infringement and invalidity. Mr. Smith has prepared and prosecuted patents, developed patent opinions, and participated in Inter Partes Review proceedings for several Fortune 100 clients.
Prior to law school, Mr. Smith worked as an engineer for IBM and Energizer Battery, where he managed time-sensitive, multi-million dollar development projects. This experience enables Mr. Smith to understand the technical, commercial, and logistical challenges faced by inventors and businesses.
Mr. Smith earned his J.D. from Franklin Pierce Law Center (now University of New Hampshire School of Law) in 2010. During law school, Mr. Smith served as chief articles editor for the Pierce Law Review. Mr. Smith earned his M.S. in Materials Science and Engineering from Cornell University in 1998. Mr. Smith earned his B.S. in Materials Science and Engineering from Carnegie Mellon University in 1995. While at Carnegie Mellon, Mr. Smith worked at Los Alamos National Laboratory in the Superconductivity Technology Center where he investigated the effect of processing and microstructure on the critical current density of superconductors.
Mr. Smith has co-authored over a dozen peer-reviewed technical publications in superconductivity, magnetic materials, and nanotechnology.
Mr. Ellsworth concentrates his practice on drafting and prosecuting patents in the fields of computer software and hardware. He has broad expertise drafting and prosecuting patents in the fields of computer system design and implementation, circuitry and chip design and fabrication, including semiconductor-based memory and control devices, communications systems including wired and wireless systems, aircraft systems, medical devices, display devices, and power systems.
In addition to helping clients to obtain patent protection for their inventions, Mr. Ellsworth also assists clients to obtain trademarks, in copyright registration and infringement issues, and counsels clients in matters of patentability, freedom-to-operate, and infringement/non-infringement opinions, and in due-diligence analyses.
Mr. Ellsworth graduated cum laude from Pepperdine University School of Law in 2006. He earned is B.S. in Electronics Engineering in Technology in 2002 from Brigham Young University.
Mr. Ellsworth is fluent in Spanish.