Elizabeth Chien-Hale
Counsel
Overview

"Living in the confluence of East and West, both American and Chinese culturally and linguistically, I help my clients protect their intellectual property rights in both China and the United States."

As a 20-year veteran in the field of intellectual property law, Elizabeth Chien-Hale brings an entrepreneurial, client-side perspective to the services of protecting intellectual property rights across borders, especially in the United States and China. Elizabeth has seen the protection process from cradle to grave, from prosecution to litigation. 

  • Experience in U.S. and Chinese law firms in offices in Asia
  • Thought leader and consultant sought by foreign law firms, universities and professional organizations
  • Leadership roles in the IP Law Section of the American Bar Association and American Society of International Law
  • Extensive volunteer activities for the Silicon Valley-based Chinese American organizations, and other IP and technology organizations based in China
  • Native fluency in Mandarin, and a frequent speaker for topics relating to intellectual property protection in China, Taiwan, Hong Kong, and the United States.

Furthermore, drawing on her in-house experiences in the past, Elizabeth understands the needs of a client from both the technology and the business sides. Elizabeth is more than just a lawyer offering legal solutions; for her clients, she is an integral member of their strategy teams who can help to achieve their business goals.

Elizabeth started her career in law firms. She worked for Silicon Valley and national firms such as Wilson Sonsini, and Fish & Richardson. She also has rich in-house experiences, having worked for both US and Asian companies on cross-border intellectual property issues. Drawing on her in-house experiences in the past, Elizabeth understands the needs of a client from both the technology and the business sides. Elizabeth is more than just a lawyer offering legal solutions; for her clients, she is an integral member of their strategy teams who can help to achieve their business goals.

Education
  • LL.M., International and Comparative Law, with distinction
    Georgetown University, 1997
  • J.D.,
    University of Hawaii at Manoa, 1994
  • M.A., Computational Linguistics (Artificial Intelligence)
    University of California, Berkeley, 1989
  • M.S., Engineering in Telecommunication, Certificate in Networking
    University of Toronto
  • B.S., Mechanical/Aerospace Engineering
    University of California, Berkeley, 1983
Bar Admissions
  • California
  • District of Columbia
  • Supreme Court of the United States
  • U.S. Patent & Trademark Office
Technical Background
  • Aerospace/mechanical
  • Emerging Green Technology
  • Telecommunication
Languages
  • Cantonese
  • Mandarin
  • Mandarin (native)
  • Taiwanese
Experience | Legal

Brinks Gilson & Lione, Washington, D.C.
2015-Present

Institute for Intellectual Property in Asia, Fremont, California
Founder & Director, 2002-2015

Eaton Corp., Shanghai, China,
Director, Asia Pacific Intellectual Property Legal Affairs, 2011-2013

Industrial Technology Research Institute, Hsinchu Taiwan
Special Project Team Leader/Interim Chief Executive Officer for IP Bank, 2010-2011

Apple Inc., Cupertino, California
Senior Counsel/China Coordinator
2008-2010 | Outside Counsel 2006-2008

Baker & McKenzie, Hong Kong
Senior associate  2000-2001

Fish & Richardson, Redwood City, California
Associate 1999-2000

Wilson Sonsini, Palto Alto, California
Associate 1998-1999

Forward Thinking
publication
May 25, 2017
Elizabeth Chien-Hale's article, "A New Era For Software Patents in China" was published in Law360 on May 25, 2017. Please click here to read the article.
alert
March 16, 2017

The State Intellectual Property Office of China (“SIPO”) on March 1, 2017 finalized the amendment to its Guidelines for Examination; the amendments included patentability of business method patents, enhanced claiming options for software-related inventions, post-filing submission of experimental data for chemical inventions, liberalized amendment practice in post-grant invalidation proceedings, and availability of prosecution documents of Chinese patents and applications...

alert
October 11, 2016

On October 7, 2016, the en banc Federal Circuit reversed a panel decision issued earlier this year and reinstated...

in the media
August 28, 2015

On August 28, 2015 Brinks Gilson & Lione was mentioned in IPPro. The article notes the addition of ...

alert
June 29, 2015
A new pilot program at the Patent Trial and Appeal Board (PTAB) allows Appellants with multiple ex parte appeals to accelerate their appeals on a one-for-one basis. Appellants can accelerate one appeal by withdrawing an appeal of another ...
Presentations
  • "IP Wars Round Two: Wearables," 31st GLOBAL LEGAL & IP CONFEX, Speaker, Singapore, February 16, 2016
  • "Monetization of Intellectual Property Rights: Monetizing options in China/Hong Kong/Taiwan Webinar," U.S. Department of Commerce | International Trade Administration, Moderator/Speaker, January 18, 2017
  • "What U.S. Patent Practitioners Need To Know About Chinese Patent Law," Landslide Webinar Series, ABA, Center for Professional Development, Presenter, December 20, 2016
  • "The Changing Car: Environmentally-Friendly, Smart and Autonomous," BIT's 3rd Annual Global Congress of Knowledge Economy 2016, Presenter, Qingdao, China, November 11, 2016
  • “Protecting Trademarks and Copyrights in Today’s and Tomorrow’s Online Environment," INNOSCELL Annual Symposium, China General Counsel Series, Presenter, Beijing, October 25, 2016
  • 6th Annual Low Carbon & Green Grown 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, Presenter, Beijing, China, June 14, 2016
  • "Design Patents Essentials," SIPO-US Bar Liaison Counsel Beijing Seminar, Beijing, China, June 13, 2016
  • "2016 IP Strategy Forum: Taiwan, the United States and China," Forum Organizer and Panel Moderator, Taipei, May 20, 2016
  • "Entrepreneurship and Innovative Economic Development: Examples from China, Hong Kong and Taiwan," 2016 LESI Conference, Presenter, 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, Presenter, 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, Presenter, June 26, 2015
Press Releases & Events
December 20, 2016

On December 20, Elizabeth Chien-Hale will serve as moderator and presenter at the ...

November 28, 2016

WASHINGTON, D.C.—Elizabeth Chien-Hale, counsel at intellectual property law firm Brinks Gilson & Lione, will ...

May 26, 2016
CHICAGO—Brinks Gilson & Lione, one of the largest intellectual property law firms in the United States, announced today that it has filed an application with the Shenzhen Justice Bureau to establish an office in Shenzhen, China, the ...
May 16, 2016

Brinks Gilson & Lione President James Sobieraj opened the 2016 Licensing Executives Society International (LESI) ...

August 13, 2015
Chicago — Elizabeth Chien-Hale, former Apple in-house counsel and founder of the Institute for Intellectual Property Law in Asia (I2PLA), has joined Brinks Gilson & Lione in Washington DC, supplementing the firm’s patent ...
Honors
  • Recipient of the Outstanding IP Manager Award by China Daily and China Intellectual Property Magazine, 2012
  • Visiting Scholar, IP Center, Chinese Academy of Social Sciences, 2007
  • Research Scholar, College of Law, Peking University, 1995
Affiliations
  • American Bar Association
    • Member of the Council, Intellectual Property Law Section
    • American Bar Foundation, Fellow
    • ALI-ABA Intellectual Property Advisory Panel
    • ABA/IPL Section Liaison to the Asian Patent Attorneys Association
    • ABA/IPL Section Co-Representative to the SIPO/US Bar Liaison Council
    • Joint Task Force on PRC Patent and Trademark Laws Amendments, Co-Chair
  • American Society of International Law
    • Corresponding Editor of International Legal Materials, 2007-present
    • Executive Council, 2012-2015
  • Peking University Alumni Association, Northern California Chapter
    • Legal Advisor, 2010-present
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