Bao Tran, Esq.
direct: 408.827.3306 main: 773.570.3330 fax: 773.570.3328
Practice Groups & Technologies: Copyrights; Licensing; Litigation Counseling; Patent Prep &
Prosecution; Patent Counseling & Post-Grant; Trademarks & Unfair Competition; Computers, Software, & Business Methods; Electronics, Semiconductors, & Optics; Mechanical Devices; Medical Devices
Office: San Jose
Mr. Tran is Of-Counsel to Klintworth and Rozenblat IP. Mr. Tran has over twenty years of experience in the intellectual property field and has extensive experience in counseling and management of intellectual property portfolios, patent and trademark preparation and prosecution, patent and trademark opinions, due diligence assessments, licensing, product development strategies, technology transfer, intellectual property litigation management, and copyrights. He has perspectives as both in-house and outside counsel to a variety of companies ranging from start-ups to public companies.
Mr. Tran has filed and prosecuted in excess of eight-hundred patent applications on behalf of diverse clientele including Fortune 500 companies, medium sized companies, start-ups, and Universities. Mr. Tran has successfully represented domestic and international companies in intellectual property litigation. Mr. Tran's practice includes a wide array of technology fields. Representative technology fields in which Mr. Tran has experience include: medical devices; semiconductors; automotive; business methods; computer hardware; electronics; internet applications; materials; mechanical devices; nanotechnology; power tools; and software.
Mr. Tran also is experienced in conducting searches to determine the availability of marks, filing, preparing and prosecuting trademark applications, rendering trademark opinions, and counseling clients on a wide range of trademark issues. Mr. Tran counsels the firm’s clients to develop and protect their portfolios. Mr. Tran utilizes an extensive network of foreign associates to protect the intellectual property of the firm’s clients worldwide.
Prior to joining the firm, Mr. Tran was a Partner at Tran & Associates, General Counsel at The Resource Group, Associate General Counsel at Align Technology (NASDAQ: ALGN), and also practiced at Fish & Richardson.
REPRESENTATIVE PATENT PROSECUTION EXPERIENCE
Mr. Tran's representative clients include the following:
■ Represented the country's largest dental companies from start-up to IPO in a variety of intellectual property matters, including procurement, prosecution, due diligence assessments, opinions, and litigation, involving technologies such as dental materials, methods of manufacturing, 3D printed manufacturing systems, software systems, and dental appliance cleaning systems, among others, and also implemented HIPAA system for the company.
■ Represented a medical device start-up in intellectual property matters, including procurement and prosecution, involving technologies such as minimally invasive devices, and surgical devices.
■ Represented a fabless 3D semiconductor company in intellectual property matters, including procurement and prosecution, involving technologies such as FinFET and monolithic 3D IC design.
■ Represented the world’s largest semiconductor fabrication equipment company in intellectual property matters, including procurement and prosecution of semiconductor processing equipment.
■ Represented the R&D research arm of an international company in intellectual property matters, including procurement and prosecution, involving technologies such as wireless communication, laser communication, search engine, microgrid systems, renewable systems, image recognition, smart car, and quantum computing.
■ Represented a microbial start-up in intellectual property matters, including contract negotiations and procurement and prosecution of genetic processing and microbial design and cultivation.
■ Represents numerous Silicon Valley startup companies in intellectual property matters, including management of intellectual property portfolios, procurement and prosecution, litigation, and opinions, involving technologies such as blockchain, cryptocurrency, virtual reality, augmented reality, Internet-of-Things (IOT), gene-based data processing systems, houseware products, data storage systems, office equipment and furniture, computers and software, business methods, internet applications, health/medical systems, electronic devices, material compositions, and manufacturing processes.
■ University of Houston Law Center, J.D., 1993
■ Columbia University, M.B.A., 1987
■ Rice University, B.S., Electrical Engineering, 1985
PRIOR LAW FIRMS
■ Fish & Richardson
■ Pravel Hewitt Kimball & Krieger
BAR & COURT ADMISSIONS
■ Admitted to practice law before the Supreme Court of California
■ Admitted to practice law before the Supreme Court of Nevada
■ Admitted to practice law before the Supreme Court of Texas
■ Registered Patent Attorney before the U.S. Patent and Trademark Office