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The following is an excerpt from Practice Perspectives: Vault's Guide to Legal Practice Areas.

Han-Wei (“Harvey”) Chen, Partner—Intellectual Property

Harvey Chen is a partner with Perkins Coie’s Intellectual Property (IP) group. His work focuses on patent procurement, strategy planning and counseling, post-grant validity contentions (e.g., inter partes reviews), and litigation support for electrical and mechanical arts. He also provides trademark consultation and registration services.

Before becoming a lawyer, Harvey worked as an engineer at Philips Semiconductors. His legal practice includes work with a wide variety of technologies and industries, including consumer electronics, embedded system, digital and analog circuit design, IC manufacturing, telecommunication and computer network, computer architecture, cloud computing, and big data processing.   

Harvey has drafted and prosecuted many U.S. and foreign patent applications; his work also includes invention disclosure meetings, examiner interviews and negotiations, and appellate proceedings. He helps companies shape their patent portfolios and develop their IP strategies, formulates patent mining strategies, and performs patent analyses in due diligence projects for corporate transactions. Harvey also provides support for patent litigation and post-grant proceedings, including preparing infringement and invalidity claim charts, performing prior art searches, and providing client strategic consultation.

Harvey is fluent in spoken and written Mandarin Chinese and Taiwanese and works to help Asian companies navigate legal issues in the United States.

Describe your practice area and what it entails.

My practice includes two focuses: to help companies protect their intellectual properties and to help international companies navigate through U.S. legal waters. For the first part, I work with my clients to tailor their IP portfolio development and enforcement strategies to fit their business goals, as well as work with their engineering teams to capture their investment in research and development. I also represent my clients before the U.S. Patent and Trademark Office to argue for, procure, and/or defend their patents. When it is applicable, I challenge certain patents’ validity for my clients. For the second part, I typically play the role of a de facto in-house counsel, helping a company’s management team and legal team understand and develop solutions to the issues they face in the U.S., as well as overseeing the implementation of those solutions.

What types of clients do you represent?

I represent clients who build their businesses on technology of any sort and clients whose international business maps include the U.S.

What types of cases/deals do you work on?

I work on IP portfolio strategizing and review; patent procurement; patent due diligence review and analysis; infringement/validity analysis and opinion letters; freedom-to-operate projects; targeted patent prosecution; and patent ex parte appeals and post-grant proceedings before the Patent Trial and Appeal Board.

How did you choose this practice area?

Since I was trained as an electrical engineer and a computer scientist, learning about new technologies never gets old for me. Also, born and raised in Asia, I am an immigrant who is very familiar with the culture and intricacy of companies in Asia, as well as the legal and business issues they face.

What is a typical day like and/or what are some common tasks you perform?

My daily routine includes discussing business and IP legal strategy with company management; monitoring the progress of patent procurement cases; reviewing and supervising associates’ and paralegals’ work involving patents; conducting invention disclosure meetings and work with inventors; coordinating with foreign counsel on clients’ international IP portfolios; hosting interviews with USPTO patent examiners; and drafting responses, briefs, and memoranda for my cases.

What training, classes, experience, or skills development would you recommend to someone who wishes to enter your practice area?

The first one is certainly patent bar exam courses and the patent bar, which will provide the key to the patent prosecution world. I would also encourage law students and lawyers to gain exposure to as many different IP arenas as practical. I tend to think patent prosecution, licensing, and litigation are the legal manifestations of three practical ingredients for success in high-tech companies: technology, business, and law. The more business savvy a patent attorney can be, the better the attorney can serve the client.

What is the most challenging aspect of practicing in this area?

A successful patent lawyer has to wear many different hats—a savvy businessperson, an effective leader, a meticulous project manager and inspector, a sensible engineer, a creative problem solver, a doer, and a person who has common sense (in a lot of areas).

What do you like best about your practice area?

I love it because my practice gets the best-balanced blend of all three disciplines of my interest: technology, business, and law.

What are some typical tasks that a junior lawyer would perform in this practice area?

A junior lawyer may conduct legal and factual research; draft legal memoranda; interview inventors; draft patent applications; and draft responses to USPTO office actions.

What advice do you have for lawyers without technical or science backgrounds who want to practice in IP?

For all the areas of IP practices that are out there (i.e., patent prosecution, patent litigation, technology licensing and transactions, trademark prosecution, trademark enforcement, trade secret, copyright practices, and privacy and other state IP rights), probably only patent prosecution needs a relevant technical/science background. I would encourage lawyers even
without the technical or science backgrounds to start from other IP fields. I personally have worked with many, many stellar patent and IP attorneys who do not have technical or science backgrounds, who obviously all have excellent understanding, to the extent necessary, of the relevant subject-matter technologies. If you are smart enough, you’ll overcome the obstacles and learn it. Engineers or not, most people acquire the necessary technical and industrial knowledge on the job anyway. That investment will gradually make you an expert in that particular niche and become an entry barrier for your competitor.