Eli Mazour’s goal is to help the savviest in-house counsel and business executives deal with their most important patent-related challenges. With deep insight into the patent system, emerging policy trends, and an unwavering commitment to client success, Eli helps companies leverage IP to meet business objectives.
“[Eli] is the best at taking care of our portfolio and strategy” – a longtime client that has successfully enforced patents across the globe.
Known for data-driven, innovative prosecution strategies, Eli helps clients navigate the USPTO efficiently and secure strong patents. When necessary, he also leverages alternate USPTO channels to achieve results. His experience in licensing, enforcement, and opinion work gives him a unique, business-minded approach to prosecution and transactions, helping clients avoid pitfalls and grasp opportunities.
Eli currently focuses on:
- Patent eligibility – avoiding and overcoming §101 issues for software, AI, and fintech inventions to obtain high-quality patents efficiently and cost-effectively
- Global portfolio strategy – implementing best practices for building international patent portfolios in a wide variety of technology areas
- IP transactions & deals – structuring, drafting, and negotiating critical patent-related deals
- Developing corporate policies and policy positions related to IP
Eli also has extensive experience in obtaining license-ready, litigation-grade standard essential patents (SEPs) and preparing corresponding claim charts for licensing negotiations for one of the world’s leading developers of connectivity technology. He was the go-to attorney for the head of that company’s cellular patent development team.
He also has a background in the defense and government contracting space, including experience at a defense agency and a published article in the ABA’s Public Contract Law Journal on the importance of contractors preserving patent and technical data rights. He is particularly interested in supporting clients seeking to apply their dual-use and defense-centric innovations to advance national security objectives.
Eli’s love of talking to people and telling stories led him to start Clause 8, a widely followed IP podcast featuring the most significant voices in the IP community. He is frequently sought out for insights on patent policy, 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)