Jiwen Chen

For more than fifteen years, Mr. Jiwen Chen has lead clients ranging from academic institutions, startups to Fortune 100 companies through the technical and legal challenges involved in developing and protecting their critical IP assets in the U.S. and internationally. Mr. Chen also counseled foreign companies in doing business in Asia, especially China, and counseled Chinese companies in doing business in the U.S. His experience includes drafting and prosecuting patent and trademark applications, formulating overall IP strategy, preparing noninfringement, novelty, and freedom to operate opinions, negotiation of licensing agreements, and leveraging existing IP portfolio to strengthen its competitive position.

Mr. Chen has worldwide patent prosecution experience in a wide range of technical areas, including chemical, biotechnology, pharmaceutical and mechanical industries. He assisted clients in patent litigations in both Chinese and U.S. courts and before the USITC, e.g. in Robert Bosch LLC. v. Jiujiang Yada Traffic Equipment Co., Ltd. et al. No. 2:11-cv-01762 (D. Nev. 2011); Droll Yankees, Inc. v. Woodstream Corp. No. 3:12-cv-01662-SRU (D. Conn. 2012). He has conducted trials and appeals before the PTAB of the USPTO, and has been involved in proceedings before foreign Patent Offices. In addition, he conducted research on technology transfer at the NIH Office of Technology Transfer. Mr. Chen also served as a summer law clerk for the Honorable Joseph A. Greenaway, Jr. of the U.S. Court of Appeals for the Third Circuit.

Mr. Chen’s international practice includes advising clients on foreign direct investment, IP protection, corporate and international trade matters related to China. He previously worked in Washington D.C. office of a global top 10 general practice U.S. law firm and Shanghai office of a leading Chinese law firm. He advised major U.S. companies on legal strategies for their business formation and IP protection in China in telecommunication, pharmaceutical and herbicide fields. With his training, experience and network in both U.S. and China, Mr. Chen has assisted U.S. clients with IP due diligence, application, transaction and enforcement involving China, Taiwan or Hong Kong, and assisted Chinese clients with the same issues involving the U.S.

Mr. Chen has written numerous articles on IP laws and practices. His article on jurisdiction over patent-law counterclaims after U.S. Supreme Court’s decision was published in Northwestern Journal of Technology and IP (2009, Vol. 8, No. 1). His research on effective strategies for marketing biomedical inventions was published in Journal of Medical Marketing (2005, Vol. 4, No. 5). His articles on Chinese patent and copyright laws, technology transfer and litigation were published in China Law Reporter (July 2006) and The International Lawyer (2002, Vol. 36 No. 3), China Business Review (2001, Vol. 28, No. 5), Richmond Journal of Global Law & Business (2001, Vol. 2, No. 61).

In addition, Mr. Chen has been a frequent speaker on IP protection and enforcement in U.S. and Asia. He was interviewed and quoted as an international IP expert by the Life Science Leader magazine in September 2013. He has given speeches at the conference on Understanding China’s Pharmaceutical Market in February 2012 at Philadelphia; the Seminar on IP in India and China organized by The American Society of International Law in March 2007 at Washington D.C.; the meeting on Healthcare Business Trends with China hosted by Maryland-China Business Council. in November 2006 at Baltimore; and the Bio-Asia Conference held by Strategic Research Institute in August 2004 at San Diego.

Mr. Chen was a member of Northwestern Journal of Technology and IP. Mr. Chen also advised China SIPO on amending Chinese Patent Law in 2009. Mr. Chen is an attorney advisor in the SME International IPR Advisory Program sponsored by the ABA, U.S. Department of Commerce, and U.S. Chamber of Commerce. He also served as a judge for the Giles Sutherland Rich IP Law Moot Court Competition at GWU Law School.

Background

Education

  • Northwestern University School of Law, J.D.
  • Georgetown University, M.S., Biochemistry & Molecular Biology
  • The George Washington University Law School, LL.M., Intellectual Property Law
  • Fudan University Law School, LL.B.
  • Tianjin University, B. Eng., Chemical Engineering, and B.A., English

Bar Admission and Qualifications

  • U.S. Supreme Court; New York; Washington, D.C.
  • Registered to practice as a patent attorney before the Patent and Trademark Office
  • U.S. Court of Appeals for the Federal Circuit
  • U.S. Court of International Trade; P.R. China National Bar
  • P.R. China Patent Bar

Language

  • English
  • Chinese

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