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Elizabeth Chien-Hale

ech@appletonluff.com

Practice Experience and Education

Practice Experience

 

As a patent attorney, Elizabeth brings a combination of skills, including in-house and outside counsel, litigation and prosecution, and US and international experience to solving clients’ legal and business problems.

 

Elizabeth is rooted in prosecution and opinion work in electrical-mechanical arts, having started her career in Silicon Valley firms serving clients such as 3M, Palm, Adobe and Applied Materials.  As Apple’s Senior Patent Counsel/China Coordinator, she gained a deep understanding of the handset industry and outsourced manufacturing process.  As the APAC IP Director for Eaton, she was involved deeply with IP discussions with the C919 project with the Commercial Aircraft Corporation of China  (COMAC).

 

Through her Chinese language skills, she develops her cross-border practice focused on IP issues between China and the United States.  She helps to procure patents and trademarks in China by working closely with Chinese counsel and monitoring quality issues, and she also helps clients dispute matters in China, such as patent invalidation, trademark opposition, and other IP litigation cases before the courts. Taking advantage of the unique enforcement tracks in China, she also advises on the criminal and administrative enforcement possibilities in addition to the more commonly used judicial enforcement.

 

Education

 

LL.M., Georgetown University Law Center, 1997 (with distinction)

J.D. University of Hawaii, 1994

-Lead Articles Editor, University of Hawaii Law Review

M.A. (Computational Linguistics), University of California, Berkeley, 1989

B.S.M.E., University of California, Berkeley, 1983

 

Scholarship

  • Research scholar at the Peking University College of Law
  • Visiting Scholar at the Chinese Academy of Social Sciences

 

Languages

Chinese (Mandarin) and English

Professional History and Affiliations

Admissions

State Bar of California, District of Columbia, Hawaii

U.S. Patent and Trademark Office

Hong Kong Law Society (Registered Foreign Lawyer)

Canadian Intellectual Property Office (Registered non-resident patent agent)

Roll of Solicitors of England and Wales

U.S. Supreme Court, Federal Circuit, Court of International Trade

 

Memberships

American Bar Association

            American Bar Foundation, Fellow

            ALI-ABA Intellectual Property Advisory Panel

            Intellectual Property Law Section: 

                        Liaison to the Asian Patent Attorneys Association 2010-present

Joint Task Force on PRC Patent and Trademark Laws Amendments, Co-Chair

International Patent Law & Treaties Committee, Chair, 2005-2007

Cooperation with Foreign Patent Offices Committee, Chair, 2002-2004

                        Intellectual Property Law Section liaison to International Law Section, 2006 2008

                        Delegation leader for ABA/IPL Section trip to P. R. China, 2005 and 2007

                        Council, 2016-2020

                        Book Editorial Board, 2016-2020

            SIPO-US Bar Liaison Council

                        Secretary, 2018-2020

           

American Society of International Law

                        Executive Council, 2012-2015

                        Corresponding Editor of International Legal Materials, 2007-present

Intellectual Property Law Interest Group, Co-Chair, 2004-2011

Pacific Law Interest Group, Vice-Chair, 2003-2006, Chair 2008-2012

 

Peking University Alumni Association, Northern California Chapter

                        Legal Advisor, 2010-present

Publications

IP Commercialization in China (ABA Publishing, 2020)

 

Apple, Qualcomm, and the iPhone Ban (Law360, December 2018)

 

IP and Innovation for Emerging Nations (Co-author, Les Nouvelles, June 2017)

 

A New Era for Software Patents in China (LAW360, May 2017)

 

Corporate Counsel's Guide to Doing Business in China, 3d (Co-author, 2016-2020 editions)

 

Doing Business in China (Co-author, PLI course book, 2006-2009)

Teaching and Conference Appearances

Conferences and Appearances

How to Leverage Patents for Business Success: Licensing Strategies, World IP Review, November 3, 2020, https://lnkd.in/dDJfGsQ

 

An In Depth Look at WeChat: the APP, the ban, and the legal battle against the ban, Hawaii TechTalk, December 17, 2020, https://lnkd.in/dufzNJ7

 

Patent Litigation Trends and Licensing Traps (speaker), World IP Review and Life Sciences IP Review Conferences, March 12, 2020, San Jose (event postponed due to Covid-19)

 

The Challenges for Patent Licensing (moderator and speaker), the World IP Forum, Taipei, Nov. 8, 2019

 

The Chinese Intellectual Property Framework – Structural Changes (one-hour webinar), PLI, March 5, 2019  

 

China IP Developments Seminar (organizer and speaker), the High Tech Law Institute of the Santa Clara University School of Law, Feb. 13, 2019)

 

EVOLVING TRADE SECRETS LAWS AND ITS IMPACT ON INDUSTRY (speaker), the World IP Forum in New Delhi, India, Nov. 15, 2018

 

Smart and Connected Homes in the 21st Century (moderator and speaker), the 5th Annual Global Congress on Knowledge Economy, Qingdao, China, September, 2018

 

STRATEGIES FOR PROTECTING IP IN CHINA:  What Silicon Valley Companies Need to Know Now, USPTO’s China IP Road Show Series, November 14, 2017

 

Navigating the Chinese Patent System: What U.S. Patent Counsel Need to Know (co-speaker), Strafford Seminar, May 2017

 

SOFTWARE AND BUSINESS METHOD PATENTS: GOING FORWARD (moderator), World IP Forum, Bangalore, India May 2017

 

2016 US-China Legal Exchange (Washington DC, March, 2016)

 

6th Annual Low Carbon & Green Growth Earth Summit-2016 (LCGGES-2016), Chair and Presenter of Forum GG7020 on Intelligent Transportation Systems, KINTEX, South Korea, July 1, 2016

 

"IP Commercialization: Strategies and Options," Tsinghua University, IP Management Office, Speaker, Beijing, China, June 14, 2016

 

“Design Patents Essentials” (speaker), SIPO-US Bar Liaison Counsel Beijing Seminar, Speaker, Beijing, China, June 13, 2016

 

2016 IP Strategy Forum: Taiwan, the United States and China (organizer and panel moderator), Taipei, May 20, 2016

 

 "Entrepreneurship and Innovative Economic Development: Examples from China, Hong Kong and Taiwan," 2016 LESI Conference, Speaker, Beijing, China, May 16, 2016

 

"Fact or Fiction: You Can Protect Your Company's IP in China," Spring Conference of the ABA Intellectual Property Law Section, Presenter, April 6, 2016

 

"Cutting Edge Issues in IPR in China," Global IP Academy, U.S. Patent and Trademark Office, March 2, 2016

 

"Recent Developments related to the Examination of CN Graphic User Interface Application Design Patent Application," Patent Law Developments in China Symposium, Moderator, December 2, 2015

 

A New Stage of Emerging Patent Rights in China, Thomson Reuters Podcast, June 26, 2015

 
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