Eli Mazour loves talking to people. He relies on that and his intricate knowledge of how the patent system operates to help clients build valuable patent portfolios that advance their business goals.
Clients seek Eli out particularly for his experience in:
- Obtaining license-ready, litigation-grade standard essential patents (SEPs) and preparing corresponding claim charts
- Avoiding and overcoming patent eligibility issues for software and fintech-related inventions
- Devising and implementing best practices for growing global patent portfolios
- Developing corporate policies and positions related to IP
His goal is to be the first call for clients facing new patent-related issues.
While Eli is known for innovative, data-driven patent prosecution strategies that usually lead to successfully reaching agreements with patent examiners at the U.S. Patent and Trademark Office (USPTO), he is equally skilled at identifying and utilizing alternate USPTO channels when that is not possible.
Eli also helps clients evaluate existing patent portfolios and has experience with licensing negotiations, clearances, opinions, and enforcement. As a result, he is keenly aware of pitfalls to avoid and opportunities to grasp during patent prosecution.
Eli’s love of talking to people also led him to start Clause 8, a podcast about IP.
He is frequently sought out for his insights on how to navigate and impact patent policy, including legislative developments and changes at the USPTO.
Affiliations
- Signatory, U.S. Chamber of Commerce’s IP Principles (2023)
- Member, Intellectual Property Owners Association (IPO)
- Former vice-chair, IPO Software Related Inventions Committee
- Member, American Bar Association Intellectual Property Law Section
- Former vice-chair, ABA Government Rights Committee
- Former editor, Landslide magazine
- Member, American Bar Association Public Contract Law Section
Presentations and Publications
Presentations
- Moderator, “KPIs that Mean Something: New Measures for IP Quality and ROI,” LES Webinar (June 2024)
- Moderator, “Politics, Policy and Legislation at the Intersection of Intellectual Property,” IPWatchdog LIVE 2023 (September 2023)
- Moderator, “Practitioners’ Evaluation and Use of AI,” USPTO’s AI/ET Partnership Series #4: AI tools and data (September 2023)
- Guest, “On Building A Valuable Patent Portfolio & Patent Policy Developments,” AccelPro IP Law, hosted by Neal Ungerleider (November 2023)
- Guest, “The Art of SEP Claim Drafting,” SEP Couch Podcast Episode 24, hosted by Tim Pohlmann (July 2023)
- Guest, “Episode 6: Interview with Eli Mazour, Patent Prosecutor & Host of The Clause 8 Podcast,” The Intellectual Capitalist Show (March 2023)
- Speaker, “Predictions & Prognostications: Looking Forward to 2023,” IPWatchdog LIVE 2022 (September 2022)
- Speaker, “Capturing Innovation: The Role of IP Managers and In-House Counsel,” IPWatchdog LIVE 2022 (September 2022)
- Moderator, “SEPs: The Changing Global Landscape,” IPWatchdog LIVE 2021 (September 2021)
- Moderator, “Strategies for Protecting Artificial Intelligence (AI) & Machine Learning Post Alice,” IPWatchdog Virtual CON2020 (September 2020)
- Speaker, “Tracking Emerging Technology Trends and Adjusting Your Patent Portfolio Strategy,” IPO Emerging Technology Committee (February 2019)
- 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)
Publications
- Author, “Section 101 Rejections Soar at USPTO; 77% of AI Tech Group’s OAs Include 101 Rejections,” VoiceOfIP.com (June 2024)
- Author, “Director Iancu Should Personally Conduct Video Training Explaining Section 101 Guidance,” IPWatchdog.com (January 2019)
- Co-author, “Dissecting Dissents for Ex Parte Appeals,” IPWatchdog.com (September 2018)
- Author, “Chatting With Ex-Fed Circ. Chief About Patent System ‘Mess’,” Law 360 (April 2017)
- Author, “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)
- Author, “Exclusive Interview with Asa Kling, Israel Patent Office Director,” IPWatchdog.com (April 2013)
- Author, “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)