Bar Admissions
- California
- Registered Patent Attorney, US Patent and Trademark Office
Education
- Duke University, Certificate in Machine Learning
- George Mason University, Juris Doctor
- University of California, Berkeley, Bachelor’s Degree in Biomedical Sciences and Legal Studies
Memberships
- Voting member of the IPO Emerging Technology Committee
- Voting member of the IPO Asian Practice Committee and the IPO Women in IP Committee
- Giles Rich Inn of Court
- PTAB Bar Association
- Armed Forces Communications and Electronics Association, DC Chapter
Awards and Recognitions
- Forbes Business Council
Wen is a prosecutor with a comprehensive understanding of the patent process in the United States, Europe, and across Asia, and experience overseeing the prosecution of applications around the world. Wen is familiar with actions and procedures from all the major national patent offices, including the US Patent and Trademark Office, the European Patent Office and the China National Intellectual Property Administration. Wen has written over a hundred original patent applications, and has extensive experience with appeals before the Patent Trial and Appeal Board. She represents clients across various technological sectors including the electro-mechanical, medical devices, and computer-operated control technologies.
Wen is highly sought after for her opinion on subject matter eligibility in the United States, particularly with respect to the patentability of software applications and computer-implemented technologies. She has published legal scholarship and speaks frequently on subject matter eligibility under the Alice and Mayo framework, and has been interviewed by Nature Biotechnology on the role of generative AI in the development of new pharmaceuticals.
Highly involved in the innovation community around the world, Wen is a member of the Forbes Business Council and the WINGS WorldQuest Junior Council. Wen is also a leader in the Intellectual Property Owner’s Association, chairing the subcommittee in charge of the Diversity in Innovation Toolkit and working with leaders across the IP arena so that diverse inventors can be thoroughly recognized for their contribution to the innovative ecosphere. Wen serves on the English Pegasus Scholar Placement Committee at the American Inns of Court for the Pegasus Scholarship Trust, an exchange program for newly barred English barristers and US attorneys.
Publications:
- Author, “Lessons for Startups and Small Businesses on Patenting AI,” Forbes, 2024.
- Co-Author, “IPO AI Patenting Handbook,” Intellectual Property Owner’s Association, 2024.
- Author, “What your IP Department Wants Marketing to Know,” Forbes, 2023.
- Author, “The USPTO and the USCO Must Resolve Their Disparate Approaches to AI Inventorship and Copyrightability,” IPWatchdog, 2023.
- Author, “Should Your Supplier be Listed on Your Patent Application?,” Forbes, 2023.
- Co-Author, “What the Patent Eligibility Restoration Act Means for Artificial Intelligence Inventions,” IPWatchdog, 2023.
- Author, “AI Inventorship: Will Our Patent Laws Stand Up? My Conversation with Dr. Stephen Thaler,” IPWatchdog, 2023.
- How To Build A Patent Department As A New Or Expanding Company,” Forbes, 2023.
- Author, “SCOTUS Sustains Blow to Patent Prosecution Practice in Denying Juno v. Kite Rehearing,” IPWatchdog, 2023.
- Author, “Globalization Has Changed Intellectual Property—Here’s What Companies Need To Know,” Forbes, 2022.
- What Unauthorized Manipulation of Starlink Signals Teaches Us About the Importance of IP,” IPWatchdog, 2022.
- Author, “Patent Ownership v. Private Company Incentive,” Buyers Meeting Point, 2022.
- Author, “How to Patent Artificial Intelligence and Machine Learning Models,” Forbes, 2022.
- Author, “The Case for Patenting AI: U.S. Patent Laws Better Get Smart or Get Left Behind,” IPWatchdog, 2022.
- Author, “The TRIPS Waiver: What Does it Mean to Change the Rules of the Game?,” IPWatchdog, 2022.
- Author, “When Commercial Success can Prove Non-Obviousness,” IPWatchdog, 2022.
- Author, “How To Build a Strong and Effective IP Strategy,” Forbes, 2022.
- Chair of Subcommittee, “Intellectual Property Owners Association’s Diversity in Innovation Toolkit,” The Intellectual Property Owner’s Association.
- Contributor, “Diversity in Innovation Law Firm Toolkit,” The Intellectual Property Owner’s Association.
- Author, “USPTO Guidance Not Helpful for Method Patent Applicants,” Law360, 2020.
- Author, “Patentability of COVID-19 Biotech, Pharma & Personal Protective Equipment Inventions,” National Law Review, 2020.
- Author, “Patentablity of COVID19 Software Inventions: Artificial Intelligence (AI), Data Storage & Blockchain,” National Law Review, 2020.
- Author, “Examining Confusion Between the Chamberlain and Berkheimer Decisions at the Federal Circuit,” IPWatchdog, 2019.
- Author, “Examining the Unforeseen Effects of the USPTO’s New Section 112 Guidelines,” IPWatchdog, 2019.
Speaking Engagements:
- March 6, 2024 – Artificial Intelligence MastersTM, “Getting AI Patents Allowed: Supporting and Enabling AI Applications to Survive 101 and 112”, Panelist.
- September 19, 2023 – IPWatchdog LIVE 2023, “The U.S. IP System: Diagnosis, Prognosis & Predictions”, Speaker.
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June 28, 2023 – Global Innovation Policy Center at the US Chamber of Commerce, “The Intersection of AI & IP,” Speaker.
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June 21, 2023 – Patent Prosecution & Portfolio Management Masters™, “The Challenges of Drafting and Prosecuting AI Patents,” Panelist.
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June 20, 2023 – Patent Prosecution & Portfolio Management Masters™, Secondary Considerations and the Art of Responding to Obviousness Rejections,” Panelist.
- June 16, 2023 – PTAB Bar Association Webinar, “PTAB Discretion – Addressing the USPTO’s ANPRM Regarding Discretionary denials, Fintiv, and Compelling Merits,” Panelist.
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March 7, 2023 – AI Masters 2023, “A Software Patent Perspective: Best Practices for Drafting to Stand the Test of Time,” Panelist.
- September 13, 2022 – IPWatchdog LIVE 2022, “Predictions & Prognostications: Looking Forward to 2023,” Panelist
- September 12, 2022 – IPWatchdog LIVE 2022, “Where Do We Go From Here on Patent Eligibility After American Axle?” Panelist.
- March 10, 2022 – International IP Masters™, Part of the Masters Symposia Series hosted by IPWatchdog, Panelist and Speaker
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December 10, 2019 – Introducing the IPO’s Diversity in Innovation Toolkit at the NYIPLA (LIVE)
Wen Xie introduced the Intellectual Property Owners Association’s Gender Diversity in Innovation Toolkit which aims to serve as a blueprint for companies looking to close the leaks in their patent pipeline and increase diversity in the innovation ecosystem. Wen Xie represented the Women in IP Subcommittee in leading a discussion that went through the aspects of the Toolkit. -
November 6, 2018 – The Impact on Examination Practice in Light of Mayo v. Prometheus
Wen Xie presented a lecture and led a live and discussion at Daikin Industries’ corporate headquarters in Osaka, Japan. -
November 5, 2018 – Introducing Changes to § 101 Examination Procedure at the USPTO at Yamaha Corporation
Wen Xie presented a lecture and led a live discussion at Yamaha Music’s corporate headquarters in Hamamatsu, Japan.
Features and Interviews
- AI for drug discovery is booming, but who owns the patents?, quoted in Nature Biotechnology, 2023.
- Will More Women Patent Attorneys Lead To More Women Inventors? Interview with Forbes, 2022.
- What IP Stakeholders are Giving Thanks for in 2022. Quoted in IPWatchdog, 2022.
- The Path Forward from American Axle: Discussing Legislative and Agency Rulemaking Fixes to Section 101. LIVE panel discussion covered by IPWatchdog, 2022.
- Guarding Private Incentive to Innovate. Interview with Dial P for Procurement, 2022.
- The U.S. Chamber of Commerce Artificial Intelligence Commission on Competitiveness, Inclusion, and Innovation. Testimony on IP and AI, 2022.
- The Misapplication and Legal Deficiencies of the TRIPS Agreement for COVID-19 Patents. Interview with National Law Review, 2022.
The IP Practice Series hosted by Global IP Counselors™, co-published by IPWatchdog:
- The Deferred Subject Matter Eligibility (DSMER) Response Program
- Writing Strong Patents: §101 Subject Matter Eligibility
- Claiming Computer Implemented Steps: Means-Plus-Function
- OBVIOUSNESS – A Look at Design Patents
- CLAIM CONSTRUCTION – When are Intended Use Statements Limiting?
- SUBJECT MATTER ELIGIBILITY – Artificial Intelligence
Wen hosts the IP Practice Vlogs by Global IP Counselors™, an original series of practice videos for the US IP practitioner. The series is co-published by IPWatchdog, the largest intellectual property publication in the world.
