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Michael Nguyen

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US Patent Counsel for Chinese Technology Companies

Michael Nguyen guides Chinese technology companies through US patent prosecution, portfolio development, and enforcement from Brown, Neri, Smith & Khan LLP in Los Angeles.

With 16 years of experience in intellectual property law, Michael specializes in US patent procurement for Chinese companies in the semiconductor, telecommunications, software, and cleantech sectors. He manages US Patent and Trademark Office prosecution, prepares freedom-to-operate opinions, and coordinates litigation strategy when patents are asserted against Chinese-origin products in US courts and before the International Trade Commission.

Education
UC Berkeley School of Law, JD
Languages
English, Vietnamese
Bar Admission
2007-09-01
License
29471835
Firm
Brown, Neri, Smith & Khan LLP

Practice Focus

  • ⚖️ US patent prosecution — drafting and prosecuting utility and design patent applications at the USPTO, including appeal proceedings and examiner interviews
  • 📜 IP portfolio strategy — global patent portfolio assessment, gap analysis, and strategic filing planning aligned with Chinese companies' commercial objectives
  • 🛡️ Section 337 investigations — representing Chinese companies at the International Trade Commission in patent-based exclusion order proceedings
  • 💼 Patent litigation support — infringement and validity analysis, claim construction strategy, and coordination with Chinese patent counsel for US-China parallel proceedings
  • 🔍 Freedom-to-operate opinions — pre-market clearance assessments for Chinese products entering the US market

Working Method

Michael works closely with Chinese in-house IP teams to understand their technology and commercial objectives before developing a US patent strategy. He conducts regular portfolio reviews with clients to identify invention disclosures suitable for US filing and coordinates with Chinese patent agents on counterpart applications.

When enforcement actions arise, Michael leads the US legal response while maintaining seamless coordination with Chinese counsel. He prepares technical claim charts, works with US-based expert witnesses, and manages discovery obligations for Chinese-named inventors under US procedural rules.

Local Practice in Los Angeles

Los Angeles is home to a thriving technology and entertainment industry as well as the Central District of California, one of the busiest patent litigation venues in the United States. Michael's location at Brown, Neri, Smith & Khan allows him to serve Chinese technology clients with offices in California while maintaining close relationships with the USPTO's Silicon Valley satellite office.

Professional Standards

Michael is registered to practice before the US Patent and Trademark Office and is a member of the State Bar of California, the American Intellectual Property Law Association, and the Los Angeles Intellectual Property Law Association. He speaks regularly on US patent strategy for Chinese technology companies at industry conferences in both the United States and China.

Typical Client Matters

Michael represents Chinese semiconductor companies in US patent prosecution for integrated circuit designs, memory architectures, and advanced packaging technologies. He manages patent portfolios covering both digital and analog circuit innovations, preparing detailed specifications with Chinese inventors and coordinating translation of technical disclosures from Chinese to English for US filing.

In the telecommunications sector, he handles 5G and IoT-related patent applications for Chinese equipment manufacturers, navigating the complex prior art landscape and developing claim strategies that address both US and Chinese examination standards. He coordinates with European and Japanese counsel when the same invention portfolio requires parallel protection across multiple jurisdictions.

For Chinese cleantech companies, Michael manages US patent prosecution for battery technology, solar panel innovations, electric vehicle components, and energy storage systems. He advises on design-around strategies when Chinese products face blocking patents held by US or international competitors, and conducts validity assessments for patents asserted against Chinese manufacturers.

Managing US Patent Litigation Risk

Chinese companies expanding into the US market frequently face patent infringement allegations. Michael provides pre-suit risk assessments, develops non-infringement and invalidity positions, and coordinates the selection of US litigation counsel when proceedings become necessary. He also advises on the strategic use of inter partes review and post-grant review proceedings before the Patent Trial and Appeal Board as a cost-effective alternative to district court litigation.

Practical Guidance for Chinese Patent Applicants

Michael understands that US patent prosecution differs significantly from Chinese patent practice. He guides Chinese clients through the distinctive features of the US system, including the first-to-invent transition, the duty of candour and good faith in dealing with the USPTO, the more demanding enablement and written description requirements, and the different approach to claim construction. He provides plain-language explanations of these differences so that Chinese inventors and in-house counsel can make informed decisions about their US patent strategy.

For cost-conscious Chinese clients, Michael offers value-oriented filing strategies such as prioritizing the most commercially important inventions for US filing, using preliminary amendments to streamline prosecution, and leveraging the Patent Prosecution Highway where available. He provides upfront cost estimates for each phase of prosecution and obtains client approval before incurring significant additional costs.

Why Clients Choose to Work with This Office

Clients choose this practice because the team delivers clear, commercially focused guidance that reflects a genuine understanding of the international business environment. Every engagement begins with a detailed consultation to understand the client\u2019s specific objectives, risk tolerance, and timeline. Throughout the relationship, the team maintains open communication and provides practical recommendations that address both the legal requirements and the underlying business goals. This approach has earned the trust of a growing number of international clients seeking reliable counsel in an increasingly complex regulatory landscape.

Specific details

Bar Admission Year ---
Law School UC Berkeley School of Law
Languages English, Vietnamese
Bar Association State Bar of California
License Number 29471835
Years of Experience 16 years
Practicing at which Law Firm Brown, Neri, Smith & Khan LLP

Location

Los Angeles, United States, North America, International Lawyers

Area of Expertise Details

Practice Area Patents

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