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Resources

The Institute for Intellectual Property in Asia provides a variety of consulting services for cross-border IP issues ranging from procurement, arbitration, monetization, to IP-related corporate work through a network of highly experienced practitioners.

I. The Institute is founded by Elizabeth Chien-Hale, an IP attorney with broad international IP experiences.

Ms. Chien-Hale is a U.S. attorney specializing in international patent and other forms of cross-border intellectual property protection. Her specialty is in developing IP portfolios and crafting corporate IP strategies.

Ms. Chien-Hale has wide experiences both as in-house counsel for corporations, as well as law firm experiences. She served as the Director of Intellectual Property Legal Affairs for the Asia Pacific Region at the Eaton Corporation. Prior to Eaton, she was Apple’s Inc.’s senior counsel on China IPR issues. In addition to her enterprise experiences, her law firm experiences included Baker & McKenzie’s Hong Kong office, and Wilson Sonsini Goodrich & Rosati, and Fish & Richardson in the Silicon Valley.

Ms. Chien-Hale has substantial technical knowledge in a variety of electrical and electro-mechanical arts, having drafted and prosecuted patent applications in telecommunication, software, wireless and Internet-enabled devices, language-based data processing, semiconductor processing and computer-related mechanical devices. She was also involved in international intellectual property litigation cases, including cases relating to patent, trademark, and trade secrets violations.

Ms. Chien-Hale has lectured and written, in both English and Chinese, on the topics of international intellectual property protection and the Chinese constitutional structure. She was a research scholar at the College of Law of the Peking University in 1995, and a visiting scholar at Intellectual Property Center of the Chinese Academy of Social Sciences in 2007. She is a registered patent attorney before the U.S. Patent and Trademark Office, licensed to practice in the states of California, Hawaii, and the District of Columbia. She is also admitted to the Bar of the U.S. Supreme Court, US Court of International Trade, US Court of Appeals for the Federal Circuit, and a British Solicitor. Her name has been included in the Who’s Who in America, Who’s Who in American Law, and Who’s Who in the World.

Ms. Chien-Hale is an active participant in the professional organizations. She is a member of the Executive Council of the American Society of International Law. She is a fellow of the American Bar Foundation. She also served as chairs for international committees and task forces set up to comment on the PRC intellectual property laws, and as liaisons to other intellectual property organizations, on behalf of the Intellectual Property Law Section of the American Bar Association.

II. In addition, the Institute is in collaboration with a variety of independently operated firms and practitioners:

a. Arbitration:

M. Scott Donahey:  Mr. Donahey is an independent arbitrator practicing law in California. He received his BA from Stanford University, MA from the Johns Hopkins University, and JD from Santa Clara University.

Mr. Donahey specializes in arbitration and mediation. He is Mediator, U.S. China Business Mediation Center (a Joint Project of the Conciliation Centre of the China Council for the Promotion of International Trade and the CPR Institute for Dispute Resolution); Panel of Arbitrators, Hong Kong International Arbitration Center, Singapore International Arbitration Centre, Japan Commercial Arbitration Association, Korean Commercial Arbitration Board, and Commercial Arbitration Association of Taiwan.

Mr. Donahey is also on the Domain Name Panel of Asian Domain Name Dispute Resolution Centre of Beijing and Hong Kong, Hong Kong International Arbitration Centre, china Internet Network Information Centre, Hong Kong International Arbitration Centre, and Hong Kong International Arbitration Centre.

b. Monetization:

Sanjay Prasad:  Sanjay has practiced at the forefront of technology and intellectual property for over twenty years. He is experienced in all business and legal aspects of intellectual property from developing IP strategy for senior management to execution of the strategy, including patent portfolio development, deal development and negotiation and monetization.

Sanjay earned his law degree from Syracuse University College of Law where he was an editor of the Syracuse Law Review. He also earned a Masters in Computer Engineering and a Bachelor in Electrical Engineering, both from Boston University.

His experience includes both as outside counsel, in-house counsel, and as a licensing executive focusing on acquisition and licensing initiatives. Among other things, he is an expert on the development and execution of patent portfolio commercialization plans, patent acquisitions, and on advising on and implementing patent acquisition programs.

More information on Mr. Prasad can be found at http://www.prasadip.com/

c. Corporate IP work:

Emil Chang is the managing attorney of Venture Pacific Law.

Mr. Chang brings with him over twenty years of legal expertise and management experience with high-technology companies. In particular, Mr. Chang specializes in serving Silicon Valley and U.S./Asian high-technology clients, providing services in the areas of general corporate matters, venture financing, merger/acquisition, international transactions, intellectual property matters, patent prosecution, and licensing.

During the first part of his career, Mr. Chang practiced exclusively in the field of intellectual property – in particular, patent prosecution, patent infringement opinions, and litigation of intellectual property matters. During the second part of his career, Mr. Chang served as general counsel and held management positions with a number of Silicon Valley and international companies.

During the height of the Dot-com era, Mr. Chang was also a co-founder of an Internet infrastructure software company.

More information on Mr. Chang can be found at http://www.vpaclaw.com/