Level Up Series: Working with Foreign Counsel: Ethical and Strategic Considerations

Date: Wednesday, July 13, 2022

Time: 11:00 A.M. to Noon EDT

Level Up Series: Working with Foreign Counsels:  Ethical and Strategic Considerations

Attorneys have duties to communicate with their clients whether they are for domestic or foreign filings. With domestic filings, attorneys may have more control since they deal with rules within the U.S., and primarily the ones with the United States Patent & Trademark Office (USPTO). For foreign filings, practitioners from both the U.S. and other countries have additional challenges regarding the rules and practices acceptable to the respective countries. For language, cultural and historic purposes, foreign associates often are instrumental in ensuring that the patent or trademark applicants or owners—the “clients”—are informed about material facts relevant to the relations. Based on this intricate relationship, Virtual Patent Gateway (VPG) invited several practitioners from both the United States and Asia to gain insights from their lessons learned.

Our panelists include York M. Faulkner, Founder of The YMF Law Firm (Tokyo, Japan); Melanie Grover, Partner at Brake Hughes Bellerman, LLP (Ashburn, VA); Alysa Youngson, Attorney at Muir Patent Law (Great Falls, VA); Nancy (Xiaowen) Song, Partner at Linda Liu & Partners (Beijing, China); and moderated by Judy (Wanjung) Chung, Senior Patent Counsel at Colgate-Palmolive (Piscataway, New Jersey).

Moderator:

Judy Chung, Senior Patent Counsel, Colgate-Palmolive

(Piscataway, New Jersey)

Judy Chung is the Senior Patent Counsel - Packaging at the Colgate-Palmolive Company.  Judy’s practice focuses on strategic patent procurement, global patent prosecution, client counseling, freedom-to-operate opinions and competitive landscaping analysis.  In addition, Judy is an integral part of the patent budget committee at Colgate, overseeing the annual patent budget.  Judy assisted in various M&A projects and handled numerous patent troll matters.

Prior to becoming an in-house counsel, Judy was an associate at Finnegan LLP for over three years.  During her time at Finnegan, Judy worked on patent prosecution, litigation and opinion matters in a variety of technical areas including mechanical, electrical, and business methods, etc.

Panelists:

York Moody Faulkner, Founding Member, The YMF Law Firm (Tokyo, Japan)

York is a veteran trial lawyer with more than 30 years of experience handling high-stakes litigation, trying cases to verdict in numerous jury and bench trials.

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York began his career as a federal prosecutor in the Western Criminal Enforcement Section of the U.S. Department of Justice, Tax Division. In civil practice, York has focused on intellectual property litigation with a career focusing on representing brand companies in pharmaceutical and biologics cases.

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York has a global practice working and living in Tokyo as the founder of his own firm. He has extensive experience in litigation involving Japanese parties and routinely works with local counsel in the United States in representing Japanese clients in U.S. federal and state courts as well as the International Trade Commission.

Melanie Grover, Partner, Brake Hughes Bellerman LLP (Ashburn, Virginia)

Melanie Grover is a Principal at Brake Hughes Bellermann LLP. Melanie’s practice focuses on strategic patent prosecution, client counseling, and opinions in a range of technical areas including database technology, user interfaces, big data analytics, and medical software and devices. Melanie has provided companies with opinions on patentability, infringement, and the applicability of industry standards. Additionally, she has helped clients develop and extend patent portfolios for technologies relating to material science and various aspects of software including machine learning and artificial intelligence, database and index design, cloud computing, security, user interfaces, natural language processing, smart devices, and enterprise systems.

Melanie was previously an associate for Finnegan LLP in the areas of patent prosecution, client counseling, and litigation having experience as a software engineer for mainframe, client-server, and web-based environments.

Nancy (Xiaowen) Song, Partner, Linda Liu & Partners (Beijing, China)

Nancy Song is a Chinese patent attorney who passed U.S. patent bar in 2018. She has an EE degree Tsinghua University and gained her LL.M. from Santa Clara University as a Silicon Valley Law Fellow and CALI award winner. She specializes in computer databases, medical instruments, and secured identification and authentication instruments. Her practice encompasses patent drafting, prosecution, invalidation, portfolio analysis, and commercial advice in these areas.

She works in Chinese and English and is proficient reading Japanese literature. She started her patent career in a global leader of consumer IC design. She is trusted in handling transferred-in cases, rectifying defects in prior prosecution and overturning unfavorable results for the clients. According to I.AM Patent 1000, she is “the perfect cooperation partner in China for patent prosecution.” She has handled more than 1000 Office Actions.

Alysa Youngson, Attorney, The Muir Patent Law (Great Falls, Virginia)

Alysa Youngson prosecutes U.S. and international patent applications and has worked with computer hardware and software, wired and wireless communication, Internet technologies, semiconductor devices, memory systems, electronic circuit design, and e-commerce and business methods. She also has extensive litigation and opinion drafting experience. Alysa has research and development experience in telecommunications as a software engineer at Nortel Networks. While there, she performed software design and support for Nortel’s digital telephony equipment, and later advanced to software design and support for Nortel’s real-time switched line over ATM telephony, Voice over IP (VoIP), and Virtual Router Distribution Node products. Alysa also has experience in Naval Weapons Warfare Simulation as a senior applications programmer for the U.S. Navy developing software to support the real-time tracking, display, and data archiving, as well as the post-exercise analysis, playback, and debrief in a distributed computing environment for an Underwater Tracking Range.

Previously, Alysa was an associate at Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, as well as Hunton & Williams, LLP, and served as a patent examiner at the USPTO.