June 22, 2023

Volume XIII, Number 173


James W. Soong

James W. Soong is partner in the Intellectual Property Practice Group in the firm's Palo Alto office.

Areas of Practice

Jim focuses his practice on intellectual property and patent strategy in a broad array of technical disciplines. He has wide-ranging experience representing clients before the Patent Office and the federal courts, including successful appeals to the Federal Circuit on cutting edge legal issues. Utilizing his technical background, Jim also represents industry-leading clients in portfolio development, pre- and post-grant including inter partes proceedings at the Patent Office, litigation in the federal courts, strategic initiatives, corporate transactions and licensing, corporate policies and best practices, and risk avoidance where intellectual property issues are core.

Jim regularly counsels clients – from start-ups to the Fortune 5 – regarding worldwide intellectual property strategy. He has prepared countless patent applications, as well as noninfringement and invalidity opinions. In addition, his experience includes advising on intellectual property issues that arise in mergers and acquisitions, technology licensing, open source, standard setting organizations, inter-company agreements, employment, and other corporate matters. Jim has an extensive record of success in intellectual property disputes, including coordinated resolution of patent litigation and inter partes proceedings at the Patent Office. Drawing on his extensive in-house corporate experience, Jim is often called upon to provide strategic direction regarding the design and optimization of corporate intellectual property policies and best practices. As in-house counsel, he led the global intellectual property strategy at Siebel Systems for six years.

For his intellectual property strategy expertise, Jim has received extensive industrywide accolades and honors. Most recently, Jim was recognized in The World's Leading Patent Professionals, IAM Patent 1000, 2017, 2018.

Pro bono advice and counseling is an important component of Jim’s practice. He received a Certificate of Recognition from the Legal Aid Society of San Mateo County for protecting the rights of a senior citizen under the California elder financial abuse statute in a pro bono litigation.

Jim is conversationally fluent in Mandarin Chinese.

Articles in the National Law Review database by James W. Soong