Jim Soong

Jim advises on intellectual property and patent strategy in a broad array of industries and technical disciplines. Jim appears before patent offices worldwide to handle mission-critical prosecution and post-grant proceedings including reviews, reexaminations, and oppositions. 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 as well as strategic handling of intellectual property disputes. 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 and their prosecution in major patent offices worldwide, as well as noninfringement and invalidity opinions. Further, Jim regularly handles post-grant proceedings before patent offices around the world, such as inter partes reviews (IPRs), post grant reviews (PGRs), reexaminations, and oppositions. 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 also continues as a member of IAM Global Leaders, an exclusive 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.

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.