Silicon Valley
T: 650.526.3207

V-Card
Download PDF Version Practices
Electrical / Mechanical Patent
Internet, e-Commerce, and Software
Introduction to Patent Licensing
Patent Exhaustion: LG vs. Quanta
Mainak (Miku) H. Mehta
Partner


Mr. Mehta’s area of focus includes technology fields such as computer software and hardware, networks, Internet-related applications, environmental technologies, optics, mechanical engineering, business processes and medical devices. His area of legal focus is the preparation and prosecution of patent applications before the U.S. Patent and Trademark Office. He has also worked on due diligence projects, including preparation of opinions in the areas of patentability, validity, infringement and product clearance, as well as patent licensing.

Bars
District of Columbia, California
U.S. Patent and Trademark Office
Dai-Ni Bar Association, Tokyo Japan (retired)

Education
University of Virginia (B.S. Systems Engineering, Environmental Sciences, 1993)
George Mason University School of Law (J.D.  1998)

Prior Experience
American Management Systems, Inc., Programmer/Analyst, - involved as a lead developer in proposal, design, software coding, testing and user documentation stages for various federal budgeting and scientific information client/server applications related to environmental and health agencies; used object-oriented programming with a variety of languages
Resource Applications, Inc., Environmental Engineer - conducted facility assessment, industrial facility technical analysis, and environmental impact statements; performed scientific analysis of federally regulated hazardous waste sites, including contamination migration and toxicity studies
Action Endeavor, Inc. - President and CEO - consulting directed to corporate leadership and teambuilding training; conservation education and training; and recreational outdoors adventure services
Fleshner & Kim, LLP, Associate - prosecuted domestic and foreign patent applications, performed patentability and validity searches and opinions; computer/electrical engineering, Internet, optics and medical device fields
Law Office of James C. Wray, Law Clerk - prosecuted provisional, utility and trademark applications; responses to Office Actions, and patent and trademark searches/opinions
Prior Art Searches, Inc., Patent Searcher - conducted patentability searches, including manual and computerized searches and Examiner consultations
Mitretek Systems, Legal Extern - corporate, employment and regulatory/environmental law


Associations
Licensing Executives Society (LES)
TiE - Silicon Valley Chapter
AIPLA – member 
Intellectual Property Owner's Association- Asian Practice Committee

Publications and Teaching
The Supreme Court Has Granted Certiorari in the Uber-Important Bilski Case - Now What?
Patent Prosecution and Enforcement Tips in View of In re Bilski
"Injunctive Relief in U.S. Patent Litigation after eBay v. MercExchange"
USPTO Rules Require New Corporate Strategies
Top Three Things To Do Under Proposed PTO Rules
RIM v. NTP Analysis by Miku Mehta (Japanese Version)
Inequitable Conduct: An overview and review of 2006 Federal Circuit Cases (Japanese Version)
Business Method Patents in the US: A Legislative Response
Business Method Patents A Judicial History and the Legislative Response
Business Method Patents in the United States: A Judicial History & Prosecution Practice
Expediting Patent Prosecution by Special Treatment of Applications
Five Important Questions Relating To The Exclusion Of References Under 35 U.S.C. § 103(c)
"Business Method Patents in the United States:  A Judicial History & Prosecution Practice", AIPPI Japan April 2004
"Five Important Questions Relating To The Exclusion Of References Under 35 U.S.C. § 103(c)," by Miku H. Mehta in The Sughrue Review, February 2002.
"Business Method Patents: A Judicial History And The Legislative Response," by Miku H. Mehta and Laura E. Moskowitz, in The Sughrue Review, August 2002.
"Expediting Patent Prosecution by the Special Treatment of Patent Applications," by Miku H. Mehta, in The Sughrue Review, April 2003.

Speeches
"What is Intellectual Property, What is a Patent, And How Do I Get One?," sponsored by ".com'n-ground" (Nov 2000)
"The Fundamentals of the Intellectual Property System in the United States," presented to the Egyptian Ministry of Finance, June 2001
"Patenting and the Gaming Industry: The basics of patenting, and industry trends," presented to casino industry representatives, Atlantic City, New Jersey, June 2001
"How to prepare a United States Patent Application," presented to attorneys at SUGHRUE MION, PLLC, August, 2001.
"Intellectual Property in Business Transactions, focusing on the Software Industry and Patent Licensing," presented to the Capital Area PC Users Group, Washington, DC, October 2001
"Intellectual Property: What is it? How do I get it? How do I protect it in the U.S. and Internationally?" presented to the French-American Chamber of Commerce, February 2002
"Business Method Patents," presented to attorneys at SUGHRUE MION, PLLC, July, 2002.
"Interview Practice Before the U.S. Patent Office: Strategies, Tips, and a Round Table Discussion," presented to attorneys at SUGHRUE MION, PLLC, October, 2002.
"Accelerating prosecution of applications before the Patent Office: Pros and Cons of the Petition to Make Special," presented to attorneys at SUGHRUE MION, PLLC, May, 2003.
Other Interests
Shenandoah Mountain Rescue Group
Highland County Cave Survey
Omicron Xi Engineering Society
National Marrow Donor Program:  South Asian Marrow Association of Recruiters