Eli Mazour’s leads the firm’s patent prosecution team with a focus on helping large technology companies build valuable, high-quality patent portfolios in an efficient manner. In this role, he develops and implements best practices for managing workflow and innovative, data-driven patent prosecution strategies for reaching favorable results at the USPTO.
Eli personally has experience preparing and prosecuting hundreds of patent applications related to computer software, Internet and e-commerce, telecommunications, networking devices, electronic consumer products, and medical devices.
Although Eli is known for being able to successfully reach agreements with USPTO patent examiners for clients’ most important patent applications, he is equally skilled at identifying and successfully utilizing alternative channels within the USPTO when that is not possible. In one such instance, the PTAB recently ruled in favor of one the firm’s oldest clients after Eli argued in an Oral Hearing.
Eli also helps clients evaluate existing patent portfolios, identify strategic areas for patenting, and create processes for harvesting disclosures of patentable inventions. In addition, he has been involved with licensing negotiations, patent infringement investigations, clearance of products (freedom to operate opinions), and patent litigation. As a result, he is keenly aware of the pitfalls to avoid and opportunities to grasp during patent prosecution.
Eli is also the creator and host of the Clause 8 podcast, which features interviews with the most interesting members of the IP community. Due to Clause 8 and his previous track record, he is sought out by various technology companies, legal and business professionals, and media organizations for his insights on various patent policy developments, including legislative proposals and changes at the USPTO.
United States Patent and Trademark Office
District of Columbia
IPO Software Related Inventions Committee – Vice Chair (2014 – Present)
Landslide Magazine – Editor
Co-author. “Dissecting Dissents for Ex Parte Appeals,” IPWatchdog.com (September 2018).
“Chatting With Ex-Fed Circ. Chief About Patent System ‘Mess’,” Law 360 (April 2017)
“Fixing America’s Patent System is the Best Strategy to Jump-Start our Stalled Economy,” IPWatchdog.com (April, 2017)
Co-author. “Alice on Dulany Street: How the PTAB handles 101 in ex parte appeals,” IPWatchdog.com (January 2017)
Co-author. “PTAB in Alice’s Wonderland,” IPWatchdog.com (September 2015)
“Exclusive Interview with Asa Kling, Israel Patent Office Director,” IPWatchdog.com (April 2013)
“If You Fix It, They Will Come: Drawing Lessons Learned from Patents for Dealing with Rights in Technical Data,” Public Contract Law Journal (Placed 3rd in the 2009 ABA Public Contract Law Journal Writing Competition) (2009)
Moderator. “Surviving Alice with Big Data,” ABA’s Webinar Series (October 2018).
Speaker. “Benchmarking Patent Portfolios of Top Defense Contractors,” ABA Public Contract Law Section, Intellectual Property Committee (November 2017).
Speaker. “Patent Eligibility: Navigating the Supreme Court’s 2016 Decisions and Its Impacts,“ The Knowledge Group (April 2017).
Speaker. “Ex Parte Appeal Decisions After Alice,” 2015 IPO Annual Meeting, Chicago, IL (September 2015).