ELAINE LEE has 20+ years of experience in many facets of high technology law. Having worked as a patent and intellectual property attorney for major technology companies as well as major international law firms specializing in intellectual property and patent law, Elaine has experience in handling:
- Complex Technology Transactions, including drafting and negotiating inbound software license agreements, outbound software license agreements, joint development agreements, alliance agreements, master service agreements, patent license agreements, standards participation agreements, software-as-a-service agreements, partner agreements, end user license agreements, copyright agreements, marketing agreements and public cloud customer agreements.
- Preparing and prosecuting patent applications, with emphasis in the software and electronic arts. Technologies include inventions dealing with cloud computing, mobile devices, computer software and hardware, communication network software, Internet and e-commerce search technologies, object-oriented application software, microprocessor design, digital and analog circuitry, ergonomic computer devices and office and light industrial automation equipment.
- Open Source Product Counseling and Compliance, including counseling large technology companies on the use of products containing open source software and contributions to open source community projects, as well as developing and delivering training to senior technical executives, senior managers, and product teams on open source license compliance issues.
- Managing U.S. and international patent portfolio development for diverse high technology companies, including patents related to electronic design automation software engineering, processor design, programmable logic device and field programmable gate array architectures, semiconductor test and packaging engineering, Java and web development infrastructure software for web services, mobile devices and applications, wireless telecommunications technologies and applications and smart card security applications. Elaine also has experience directing intellectual property asset management processes such as patent committee and IP automation software workflows.
- Performing due diligence in mergers and acquisitions (M&A) transactions, including legal and technical review and analysis of inbound and outbound open source software products to ensure compliance with open source license requirements, as well as intellectual property due diligence including review of patent, copyright and trademark assets and license agreements related to such assets.
- Intellectual Property Counseling, including handling escalations and advising executives and product teams on patent, copyright, and open source litigation and pre-litigation matters.
- Formulating pre-litigation and litigation strategy for third-party patent matters, including identifying licensees, drafting claim charts, preparing invalidity and infringement analyses, and participating in negotiation discussions.
- University of Wisconsin Law School, Juris Doctor, 1995
- Cornell University, Bachelor of Science in Computer Science and Engineering, 1992
- Admitted in California, Illinois, and Wisconsin
- United States Patent and Trademark Office registered
Representative Speaking Engagements
- “What Every IP Attorney Should Know About Open Source Software”, IP Chat Channel webinar panel, Intellectual Property Owners Association, July 31, 2014
- “International Prosecution: Strategies and Insights from the inside”, Kilpatrick Stockton International Patent Strategy Seminar, Atlanta, GA, September 9, 2003