Attorney Profile

Albert S. Penilla

Partner
Direct Line: 408-749-6903
al@mpiplaw.com

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Albert S. Penilla

Specialty:

I build strong and strategic patent assets for our clients.

I specialize in patents, post grant proceedings (PGP) before the PTAB, trademarks and complex portfolio management.

Bio:

Al has over 23 years of experience writing and prosecuting patents before the USPTO and foreign jurisdictions. My mission is to provide high quality work product that is timely and within budget. I always work hard to understand our client’s business (and our client's competitors), which allows me to consistently issue strong and strategic patents. I credit our innovative clients that have allowed me to issue over 3500 US patents and thousands throughout the world.

“Patent strength” is not a term we use loosely. We "build" patent strength with a deep understanding of how each patent will be challenged in litigation and/or before the Patent Trial and Appeal Board (PTAB). Let us show you how to build your patent strength.

Al is experienced in handling cases in a wide area of technologies, including software, Internet infrastructure and communications, encryption systems, cloud storage and processing, mobile software and applications, computer architecture, electronics and storage. Al regularly assists clients in setting up patent programs, managing patent portfolios, conducting brainstorm meetings, drafting claim outlines, conducting prior art analysis and acquisition reviews.

Al has worked with clients of all sizes to optimize filing programs and structure methods for expediting patent issuance. Al has extensive experience optimizing applications for successful processing through the USPTO’s Track-1, Patent Prosecution Highway (PPH), and implementing telephone and in-person Examiner interviews to further accelerate issuance.

Before entering private practice, Al had in-house experience at Hughes Aircraft Company. Having had prior in-house experience, Al is mindful to efficiently utilize inventor time and coordinate status with in-house counsel on a regular basis.

Recent Speaking Engagements | 32nd Global IP Conflex, San Francisco, CA, Feb. 2017: Patent Drafting for IPR Challenges: (a) Identifying key claim terms for each invention (b) Developing term construction and scope in specification; and (c) Drafting dependent claims to scope terms for IPR challenges.

Recent Client Accomplishments | 2016: MPG prepared and prosecuted Tela Innovations’ strategic Patent Portfolio, which has been successfully licensed to Google, Samsung, Qualcomm, and TSMC. Tela developed technology that addresses the physical design constraints imposed by lithography limitations at geometries of 28nm and smaller.

Education:

B.S. Electrical Engineering, University of California at Los Angeles (UCLA)

J.D. Arizona State University College of Law

Intellectual Property Diploma, Franklin Pierce Law Center (now part of The University of New Hampshire)

Admitted:

Licensed before the California State Bar

U.S. Patent and Trademark Office, Attorney Bar