Who I am

I am a co-founding partner of the intellectual property law firm of Houston Eliseeva LLP. I am admitted to practice in Massachusetts, New York, the District of Columbia and before the United States Patent and Trademark Office. I am a member of the Boston Patent Law Association and American Intellectual Property Law Association where I am vice-chairing the International and Foreign Law Committee. I am also a co-chair of the International IP Law Committee of the Boston Bar Association. I can be reached via e-mail or telephone (+1 781 863 9991).

Areas of Professional Experience

About 70% of my professional time is devoted to patent law. I hold two Master's Degrees in science and engineering (Physics and Material Science and Engineering). I practice in all areas of patent law, including opinion practice, patent prosecution, counseling, transactions involving IP issues (such as, for example, due diligence in M&A and bankruptcy cases, licensing) and litigation support. My areas of technical experience include:

• Physics, including medical, optical, imaging technology, NMR, X-ray medical and non-medical applications
• Materials Science and Engineering
• Telecommunications and Internet
• Computer engineering and software
• Physical and inorganic chemistry

I also specialize in preparing and prosecuting trademark applications, advising clients in patent, trademark and copyright matters, and counseling clients on various intellectual property issues.

You can see and print out my resume.

Where I came from

I was born and raised in Moscow, Russia, where I received my first Master's degree in Materials Science and Engineering, graduating with highest honors. I did my diploma work, research and masters' studies under the chairmanship of Alexey A. Abrikosov, winner of the 2003 Nobel Prize in physics. I worked as an intern at the Institute of Crystallography of the USSR Academy of Sciences where I wrote computer programs for crystallographic computations. After graduation I worked as a research scientist at the Russian Academy of Sciences (Department of Physical Chemistry and Technologies of Inorganic Materials, Institute of Metallurgy) for about 3 years, concentrating on computational and experimental methods of solid state structure investigation.

I am fluent in Russian and English. I graduated from a special music school in Moscow with highest honors as a pianist.

Where I came to

In 1991 I won a scholarship and came to the US as a graduate student to continue my education. I received my second Master's degree in Physics (GPA 4.0), participating in such research projects as scanning tunneling microscopy of semiconductors and computations of nuclear scattering cross-sections. I have been working in intellectual property law since 1995, first as a law clerk and then as an attorney after I graduated from law school in 1997.

Where I am now and what I am doing there

One of the most pleasant aspects of my practice is to know that my very broad technical background serves as an excellent basis for understanding complex technologies.

I have written and prosecuted patent applications related to medical devices, optical devices, electrochemistry, metallurgical and welding applications, mechanical inventions, semiconductors, laser and NMR related technology, computer engineering, computer telephony and information technology inventions, and Internet-related technology. In many technological areas I am either competent or can become competent very quickly. I am also experienced in patentability and infringement opinion letters. I enjoy the challenge of difficult opinion writing as well as all aspects of solving difficult client's problems and finding the best creative solution.

One of the most gratifying aspects of my practice is the positive comments I receive from clients regarding my ability to understand and describe their inventions and technology, and the quality of the resulting patent applications.

Since I am bicultural and bilingual in English and Russian, I have established good professional connections with patent practitioners in Russia, assisting Russian and American clients in various intellectual property legal issues in both countries. This arrangement works particularly well with clients and inventors who speak only one language, since I can work in either Russian or English effortlessly. A rapidly growing portion of my practice is devoted to assisting Western clients in protecting their intellectual property rights (patents, designs, utility models, trademarks, brand protection) in Russia and the former Soviet republics.

Creative projects and accomplishments in the legal area

Publications

(Due to migration to a new web server, some of these links are broken, but will be repaired presently.)

• Примерная стоимость патентования в США для зарубежных заявителей
• Работа российских производителей с дистрибьюторами в США - как избежать похищения своего товарного знака
• May 2005, article "Informational patent resources available at the US Patent Office and alternative search systems", in Russian, "Patent Practitioner", No. 3.
• March 2005, article "Free electronic sources of information at the US Trademark Office", in Russian, "Patent Practitioner", No. 2.
• August 2004, published an article: Provisional Application Practice in the U.S., "Patents and Licenses" (in Russian) (Moscow, Russia)
• In December of 2000 I published an article in Intellectual Property Today entitled Ariadne's Thread in the AIPA Labyrinth: Finding a Winning Path Through The 102(e)/374/PCT Maze
• I wrote a chapter on intellectual property enforcement for Intellectual Property in the Global Marketplace: Electronic Commerce, Valuation, and Protection (John Wiley & Sons), ISBN: 0471351083.
• My articles published in the Internet Legal Practice Newsletter are (sorry, the collegehill web site seemed to disappear in cyberspace):
  • New Aspects of Enforcing Your Client's Intellectual Property Rights On the Internet
  • Domain Name Dispute Policy of September '96: Is NSI Off The Hook?

International Presentations

• October 14, 2005, Presentation at International Software Developers Forum, Moscow District, Russia. "US Trademark Law and Registration of Trademarks in the US".
• October 6-7, 2005, Saint-Petersburg, Russia, The Sixth Russian Venture Fair/Venture Forum, Presented in master class "IP Aspects of Startup Business Presentation to Investors". Presented at seminar "Intellectual Property of Early-stage Companies".
• June 30, 2005, Saint-Petersburg, Russia, Collegial Readings 2005, "Protecting Russian trademarks and inventions in the US - Strategic recommendations with a view toward commercialization of intellectual property abroad".
• October 6, 2004, Saint-Petersburg, Russia, The Fifth Russian Venture Fair, How to protect your company's innovations in the US - Recommendations to Russian knowledge-based Companies. (in Russian)
• July 29-30, 2004, Chernogolovka, Russia, presentation of a speech: How to Protect Your Company's Innovations in the US/Recommendations to Russian Knowledge-Based Companies (in Russian) at the conference Prospects for Russian/American Collaboration for Business Development. Intellectual Property of High-Tech Companies in Chernogolovka.
• "Recommendations to Russian applicants patenting their inventions in the US" (in Russian): Collegial Readings 2004, St. Petersburg, June 9-10 2004.
• Invited Lecturer on business method patents and software licensing at the regional seminar on Information Technology and Protection of Intellectual Property, Moscow, Russia, July 10-12, 2001 (organized by World Intellectual Property Organization and Rospatent).
• February 19, 2001: at the invitation of Deputy Director of WIPO Mr. Shozo Uemura, spoke and met with the officials at WIPO in Geneva, Switzerland.
• In March of 2000 I made some presentations in Israel on Business Method and Software Patents After State Street Bank: Issues Related to Intellectual Property Protection on the Internet

U. S. Presentations

• October 28, 2005, Washington, DC, AIPLA Annual Meeting, Coordinated and Moderated "International Litigation How-To" session.
• June 9 and 16, 2005, San Francisco and Chicago, AIPLA Advanced Patent Prosecution Seminar, Danger and use of provisional applications.
• April 15, 2005, American Bar Association Spring CLE meeting, Washington, DC
• November 15, 2004, Electronic Filing in the USPTO and PCT Safe, 41st Annual Corporate Patent Seminar, New Orleans, LA.
• October 15, 2004, Review of Recent PCT Changes, American Intellectual Property Law Association, Washington, DC.
• August 2004, Practical Patent Prosecution Training for New Lawyers, American Intellectual Property Law Association, Arlington, Virginia.
• October 2003, Complicated Electronic Filing & Prosecution Made Easy, for Kayton's Patent Resources Group, Glendale, CA.
• September 2003, Electronic Business with the US Patent Office and WIPO, lecture for the Boston Patent Law Association, Boston, Massachusetts.
• June 2003, Electronic Filing System: its Advantages and Disadvantages, American Bar Association, San Diego, California
• January 2003, Electronic Filing System: its Advantages and Disadvantages, American Intellectual Property Law Association, San Marco Island, Florida
• Presentation about Online Resources Helpful to IP Lawyers delivered at the American Intellectual Property Law Association, April 19, 2002.
• Priority claims under the Paris Convention and AIPA presented at the American Intellectual Property Law Association meeting in January 2002 and Boston Patent Law Association PCT seminar in March 2002.
• Presentation about the USPTO electronic patent filing system, Boston Patent Law Association, March 7, 2002; American Bar Association, April 11, 2002
• Intellectual Property Issues on the Internet (3.7 MB PowerPoint file)
• In May of 2001 I moderated a panel on international intellectual property issues for the American Intellectual Property Law Association's Spring meeting in San Francisco.
• In October of 2000 I spoke for the American Intellectual Property Law Association's annual meeting about the American Inventor's Protection Act and its effect on 35 USC section 102(e).
• In February of 2000 I made a presentation at the Erie County Bar Association IP seminar on Patent Damages; Opinions as a Defence to Enhanced Damages.
• In October of 1999 I assembled and moderated a panel at the annual meeting of the American Intellectual Property Law Association on "Enforcing Intellectual Property Rights on the Internet"
• In September of 1998 I spoke at the 13th Annual Institute of the Computer Law Association of Georgia on Risks Associated with Internet Disputes
• In May of 1998 I made a presentation at the Colorado Bar Association CLE program Protecting Famous Marks from Dilution on the Internet.
• In March of 1998 I spoke at the ABA Spring CLE meeting in Washington, DC, making a presentation Beware! Risk Factors Associated With Internet Litigation.
• In March of 1998 I gave a seminar at my former Electrical and Computer Engineering Department on the subject Copyright and Trademark Legal Issues On the Internet.

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