Will Chen is a partner in the Intellectual Property Group in the firm's Silicon Valley office.
Areas of Practice
Will advises clients in all areas of intellectual property law, including patent litigation, strategic patent portfolio development, patent office post-grant validity trials, patent and technology licensing, and patent infringement and validity opinions.
Will has extensive experience in helping high-tech companies in Silicon Valley and China on building comprehensive patent portfolios and developing sophisticated international patent strategies, assessing, avoiding and responding to third-party IP threats, inter partes reviews (IPRs) and reexaminations at the patent office, district court patent litigation, in-bound and out-bound technology licensing, and negotiating IP asset transactions such as mergers, acquisitions, joint ventures and the like. He has successfully litigated patent cases in federal district courts, and post-grant proceedings before the Patent Trial and Appeal Board (PTAB). He has successfully represented telecommunications and Internet companies in multiple patent acquisition deals. Will has also published a book titled U.S. Patent Litigation in China.
In working with high-tech companies, he has developed in-depth knowledge in a range of industries including software, artificial intelligence, virtual and augmented reality, telecommunications, networking, electronic circuitry, semiconductor, MEMS, and medical devices.
Will frequently speaks, teaches, and publishes on a variety of IP-related topics, including litigation, licensing, trade secrets, strategic portfolio management, and patent enforcement.
- Defended a software company in Beijing, China and successfully forced plaintiff to dismiss the case at an early stage of the case
- Defended a semiconductor company in Shenzhen, China in a patent infringement litigation involving MEMS devices and successfully settled for the defendant without any payment to plaintiff
- Defended a network device company in Silicon Valley and successfully settled the case, and defendant was able to make public offers in the stock exchange market
- Defended multiple networking companies in Silicon Valley in a patent infringement litigation involving network switches and routers and successfully settled for the defendants
- Represented BCD Semi of Shanghai, China, in a complex patent infringement litigation involving power supply products and successfully settled the case.
- Manages patent portfolios and provides counseling on IP issues for many high-tech companies in China.
- Counsels several high-tech companies in Silicon Valley on IP issues.
- Book U.S. Patent Litigation, Intellectual Property Publishing House Co. Ltd, 2014.
- "U.S. Patent Litigation Strategy," China IP News, Jan. 13, 2016.
- "Recent Key Developments on Enforcement of Standard-Essential Patents in U.S. Courts," China IP Magazine, April 5, 2015.
- "Post Grant Proceedings," Faren Magazine, Dec. 2013.
- "Summary of After Final Consideration Pilot," China IP News, Aug. 2, 2013.
- "Enforcing Revolutionary Product Design in the U.S. Market," China IP News, June 12, 2013.
- "The Golden Design Patent," China IP News, May 8, 2013.
- "How to Expedite Examination in the U.S.," China IP Magazine, Feb. 2013.
- "U.S. Patent-Law Reform Update," China IP News, Dec. 2009.
- "Inventor Employee Agreement Under U.S. Law," Electronic IP Rights, June 2009.
Intellectual Property Law Blog Posts
- "USPTO’s Pilot Program for Deferring Subject Matter Eligibility Response," January 24, 2022
- "Benefits and Considerations for Patent Prosecution Under Patent Prosecution Highway in Australia, Canada, South Korea, and Japan," December 20, 2021
- "Benefits and Considerations for Patent Prosecution under Patent Prosecution Highway in the U.S., Europe, China, and Singapore," November 22, 2021
- "Patent Protection on AI Inventions," August 30, 2021
"Distinguish “Smart Contract” From Abstract Idea To Pass Blockchain Patentability Scrutiny," March 29, 2021
- "Blockchain Patentability Through The Lens Of A Recent PTAB Decision," March 3, 2021
China Law Update Blog
- "美国专利商标局专利主体资格延迟回复的试点项目,"January 25, 2022
- Law360, 03.25.2016
M.S., Northeastern University, 2004
LL.M, Franklin Pierce Law Center, 2001
LL.B., Tsinghua University, China, 1999
B.S., Tsinghua University, China, 1998
- New York
- U.S. Court of Appeals, Federal Circuit
- U.S. Patent and Trademark Office
- Passed China Bar Examination
- Chinese (Mandarin)