Sectors
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Eli Mazour

Of Counsel

Eli Mazour advises companies on patent matters involving artificial intelligence (AI), software, fintech and payments technologies, networking and telecommunications, data center technologies, defense-related technologies, and standard essential patents (SEPs). He helps clients build global portfolios of high-quality patents, navigate patent eligibility issues, and develop strategies for prosecution, licensing, litigation, transactions, and policy aligned with their business objectives.

[Eli] is the best at taking care of our portfolio and strategy” – a longtime client that has successfully enforced patents around the world.

Known for data-driven, business-minded counsel, Eli helps clients navigate the USPTO efficiently and secure strong patents in fast-moving and strategically important technology areas. His experience in licensing, enforcement, opinion work, and transactions informs a practical approach to patent prosecution, helping clients build stronger patents with an eye toward commercialization, licensing, litigation, and long-term portfolio value.

Eli has particular experience avoiding and overcoming patent eligibility challenges under § 101, especially for software, AI, and fintech inventions. He works with clients to identify patentable technical innovations, develop effective patent application strategies, and build global portfolios capable of protecting commercially significant products and platforms.

Eli also has extensive experience advising both SEP owners and companies that implement standards. He helps companies navigate SEP licensing and fair, reasonable, and non-discriminatory (FRAND) negotiations, including evaluating asserted portfolios and royalty demands, addressing patent pools, and developing strategies to manage licensing and litigation exposure. Eli draws on his extensive experience helping one of the largest SEP owners in the United States develop key patent portfolios and prepare claim charts and related technical materials to support licensing negotiations and enforcement, giving him a practical understanding of how SEP assets are created, evaluated, and deployed in negotiations. His work spans cellular and other communications technologies, networking, data center infrastructure, and other innovations at the intersection of infrastructure and emerging technology.

In addition, Eli has a background in the defense and government contracting space, including experience at a defense agency and published work on the importance of preserving patent and technical data rights. He is particularly interested in helping clients protect and commercialize dual-use and defense-centric innovations that advance national security objectives.

Eli’s love of talking to people and telling stories led him to found Clause 8, a widely followed IP podcast featuring leading voices in patent law, policy, and innovation. He is also frequently sought out for insight on patent policy, legislative developments, and changes at the USPTO, helping clients translate those developments into practical IP and business strategy.

Focus areas include:

  • Artificial intelligence, machine learning, software, fintech, and § 101 patent strategy
  • Global patent portfolio strategy and high-value patent prosecution
  • SEP licensing, FRAND negotiations, patent pools, and evaluation of royalty demands
  • SEP portfolio development, claim charts, and enforcement support
  • Networking, telecommunications, and data center technologies
  • Defense-related technologies, government contracting, and dual-use innovation

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)