Of Counsel Attorney
Donald Chen’s practice focuses on patent prosecution and client counseling in a broad range of areas in electrical and computer engineering including but not limited to software-related inventions, business methods, Artificial Intelligence, and cloud computing systems.
Don worked for the U.S. Patent and Trademark Office (USPTO) for more than six years, initially as a patent examiner and then as a primary patent examiner, during which he prosecuted hundreds of software-related patent applications submitted by applicants from the U.S. and abroad. During his tenure with USPTO, Don consistently maintained high quality of his work making sure applications were prosecuted fairly and exactly in accordance with the U.S. patent law and regulations to ensure the quality of allowed applications, and he always tried to uncover the most relevant prior arts that read on the claims of applications to ensure a thorough and proper prosecution, regardless the applications were from well known companies (such as IBM, Samsung, Fujitsu, SAP, Microsoft, Oracle, Apple, Intel, Qualcomm, VMware, Tencent, and Huawei) or from obscure individual inventors. Over the years with USPTO, Don formulated for himself an effective and efficient prosecution style to shorten the prosecution turn-around time by actively engaging in constructive written and verbal communications with applicants. His prosecution areas include but not limited to all aspects of software engineering (design, development, optimization, test, version control, packaging, unpacking, downloading, and updating), and virtualization of hardware and
security of virtualization (two bedrocks of cloud computing). Don uses his USPTO experience as an advantage to seek the benefit for his clients, and his familiarity with the inner workings of the USPTO is invaluable in conducting Examiner Interviews and responding to Office Actions.
Prior to joining USPTO and prior to attending law school for studying for his J.D., Don had a near decade long stint, initially as a software engineer and then as a senior software engineer, with a biotech company in Connecticut, during which, he involved in, among many other projects related to computational chemistry and cheminformatics, designing and developing a state of the art Artificial Intelligence based chemical compound screening system for drug-like properties that applied a variety of AI techniques such as Neural Network, Decision Tree, Support Vector Machines, and Self Organized Map.
After severing from USPTO, while being compelled by a USPTO’s rule that bars a departed examiner from representing, for two years, applicants whose application(s) had been examined by the departed examiner to sit out the ensuing two years, Don engaged in advising local inventors on matters of IP protection of their inventions on medical devices and plant seeds.
In his leisure time, Don loves to travel, and to read a variety of books, particularly the genres of espionage thriller, political intrigues, and war history. He also enjoys outdoor activities such as hiking, canoeing and kayaking in Canadian Rockies, and outdoor target-shooting.
- Patent Prosecution
- Patent Opinion
- IP Litigation
- U.S. Patent and Trademark Office
- J.D., University of Connecticut School of Law
- M.S. in Computer Engineering, University of Connecticut
- B.S. in Computer Science, Nanjing University
- IEEE Computer Society
- American Intellectual Property Law Association