James W. Soong

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

“James goes above and beyond to help his clients, and provides sound
advice and an excellent work product.”
- IAM 2023 (client feedback)

Areas of Practice

Jim advises on intellectual property and patent strategy in a broad array of industries and technical disciplines. Jim regularly counsels clients – from start-ups to the Fortune 5. Drawing on his extensive in-house corporate experience, he focuses his legal advice from the lens of business objectives. Clients call on him to provide strategic direction regarding the design and optimization of corporate intellectual property policies and best practices. Before, as in-house counsel, he led the global intellectual property portfolio at Siebel Systems for six years, managing all aspects of patent, trademark, domain name, trade secret, and copyright acquisition, protection, and enforcement.

Jim’s experience extends to various facets of intellectual property strategy. He has advised on the establishment of a large number of successful corporate patent programs. He also has engineered and supervised preparation of 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, due diligence, technology licensing, risk avoidance, 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 in court and before the Patent Office, including successful appeals to the Federal Circuit on cutting edge legal issues.

Jim has received extensive industrywide honors. Since 2017, Jim continues to be recognized every year by The World's Leading Patent Professionals, IAM Patent 1000. Jim is also a member of IAM Global Leaders, a gold tier ranking of the IAM Patent 1000. In addition, he continues to be ranked as an “IP Star” by Managing IP and has received similar recognition by other industry organizations. Jim is also an editorial board member of the publication The Intellectual Property Strategist.

Pro bono advice and counseling are an important component of Jim’s practice. Jim has successfully represented various pro bono clients in intellectual property matters and before the Patent Office. He also 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.

While attending law school, Jim served as an Editor of the U.C. Davis Law Review. He also served as an extern clerk for the Honorable Edward J. Garcia, United States District Court for the Eastern District of California.

Experience

Representative Matters

• Advised on creation of numerous corporate patent programs including patent award programs.
• Drafted and negotiated patent transfer agreement involving patent sale valued at more than $1 million per patent.
• Represented buy and sell sides for myriad patent portfolio transactions.
• Helped design and execute patent licensing strategies for industry leader involving patent selection, infringement diligence, assertion strategy, bite-back analyses, and licensee engagement.
• For leading enterprise software company, devised global intellectual property strategy. Launched patent procurement and enforcement strategy. Enforced trademark rights in multiple domain name recovery actions. Enforced trademark, copyright, and trade secrets in global anti-counterfeiting campaign. Drafted, negotiated, and advised on IP licenses and licenses involving software, SSOs, alliances, open source, OEMs, and vendors.
• Led intellectual property teams in various M&A and related due diligence, including acquisitions of e-various high tech companies.

*Certain of the above representations were handled by Mr. Soong prior to his joining Sheppard Mullin

Honors

Global Leaders (California), IAM Patent 1000, 2022-2024

IP Star, Managing Intellectual Property, 2021-2022

Articles

• Author, "Joint Defense Agreement Considerations in NPE Patent Litigation," The Intellectual Property Strategist
• Co-Author, "Preissuance Submission Strategies for Patent Prosecution and Litigation," The Intellectual Property Strategist
• Author, "Five Tips for Protecting Your Inventions," Legal Services for Entrepreneurs Newsletter
• Co-Author, "Patent Disputes in This Economy: Why Your CXO or Client May Require a New Look at Reexamination as a Cost-Effective and Strategic Alternative to Litigation," Intellectual Property Today
• Author, "IP Roundtable," Managing Intellectual Property 
• Co-Author, "The Threat of Evidence Destruction: Strategies to Safeguard and Accelerate Proof of Patent Infringement," Patent Strategy & Management
• Author, "Patent Damage Strategies and the Enterprise License: Constructive Notice, Actual Notice, No Notice," Duke Law & Technology Review 
• Author, "Definite Confusion Over Likely Confusion: The Scope of Appellate Review," Hastings Communications and Entertainment Law Journal 
• Author, "Another Estoppel: Acquiescence in Prosecution May Cause Patent Forfeiture in Litigation," Journal of the Patent and Trademark Office Society (also published in Intellectual Property Today) 
• Author, "Intellectual Property Protection for Computer-Related Technology in the United States, Republic of China, Japan, and People’s Republic of China," Wiley Intellectual Property Law Update 
• Author, "Taiwan and Mainland China: Unfinished Business," U.C. Davis Journal of International Law and Policy

Healthcare Law Blog Posts

• "Medical Technology – Recent Decisions at the Federal Circuit and the Patent Trial and Appeal Board," November 10, 2023

Intellectual Property Law Blog Posts

• "Generative AI and Patent Considerations – Part Two," June 20, 2023
• "Generative AI and Patent Considerations – Part One," June 7, 2023
• "Artificial Intelligence And Subject Matter Eligibility In U.S. Patent Office Appeals – Part Three Of Three," September 8, 2021
• "Artificial Intelligence And Subject Matter Eligibility In U.S. Patent Office Appeals – Part Two Of Three," September 1, 2021
• "Artificial Intelligence And Subject Matter Eligibility In U.S. Patent Office Appeals – Part One Of Three," August 25, 2021

• "'Winning' Prosecution Arguments Can Invalidate Your Patent As Indefinite," March 3, 2021

• "Alice and Incongruity in PTAB Appeals," October 8, 2020

Speaking Engagements

• Speaker, “Patent Strategy and Cost,” 31^st Annual - Silicon Valley Association of General Counsel (Nov. 2019)
• Speaker, "Standard Setting Organizations, Standard Essential Patents, and Related Patent Remedies," Mobile Payments Law, Law Seminars International, Palo Alto, CA
• Speaker, "Preissuance Submission as Preemptive Litigation Strategy," 2013 Intellectual Property Institute, IP Section of The State Bar of California, Berkeley, CA
• Panelist, "The American Invents Act: Final Provisions to Become Effective," Intellectual Property Section of California State Bar, University of California, Hastings College of Law
• Speaker, "Managing U.S. Patent Risk for High Tech Companies: Federal Circuit and AIA Developments," Taiwan Technology Industry Legal Officers Association (TILO)
• Speaker, "Internet Companies and Patent Litigation," Greenberg Traurig, LLP, Silicon Valley, CA
• Speaker, "Internet Companies and Patent Litigation," Greenberg Traurig, LLP, San Francisco, CA
• Speaker, "Recent Developments in U.S. Patent Law: Legal Strategies for Taiwan and other Global Companies," Taiwan Technology Industry Legal Officers Association (TILO)
• Speaker, "Strategic Intellectual Property Considerations for Business," Lawyer’s Committee for Civil Rights
• Speaker, “Intellectual Property Transactions and Select Issues in the Patent Transfer Agreement,” University of California at Davis King Hall School of Law
• Speaker, "Patents and Intellectual Property," Technology Entrepreneur Center of University of Illinois at Urbana Champaign with Plug and Play Tech Center
• Guest Lecturer, "Software Patents — The Law and the Controversy," University of California at Berkeley School of Law
• Speaker, "IP Issues in License Agreements," Siebel Systems Legal Training Series
• Speaker, "Patent Claims Drafting," University of Washington Continuing Legal Education Intellectual Property Certificate Program

Memberships

Editorial Board Member, The Intellectual Property Strategist

Board Member, Asian Law Alliance

Volunteer, Cupertino Union School District Wellness Committee

Volunteer, St. Simon Parish

Former Chair, City of San Mateo, Community Improvement Commission

Former Member, Chung Tai Zen Center, Translation Committee

Member, Silicon Valley Intellectual Property Law Association