Lucian C. Chen

Lucian C. Chen is Head of Patent Litigation and Prosecution and a Partner in Mandelbaum Barrett PC’s Intellectual Property Practice Group. With a remarkable career spanning over two decades, Mr. Chen specializes in a wide spectrum of commercial and intellectual property law, focusing on various technology sectors. His primary areas of experience encompass complex high-tech, pharmaceutical, and biotechnology patent and trademark litigation, intellectual property transactions, due diligence, and contract negotiations.

Mr. Chen has successfully represented clients in multi-billion-dollar patent and trademark litigation cases involving diverse products, such as computer software, antifungals, antibiotics, personal electronics, and cholinesterase inhibitors. His extensive involvement in all aspects of intellectual property litigation includes advising clients, initiating litigation, and conducting both bench and jury trials, such as numerous Hatch-Waxman cases.

In addition to his litigation prowess, he is well-versed in preparing pre-suit investigations, offering non-infringement opinions, negotiating licensing and settlement agreements, and conducting intellectual property due diligence. He also provides invaluable counsel to clients dealing with trademark and copyright disputes, as well as manages the preparation and prosecution of patent, trademark, design patent, and copyright applications. He is also recognized for his commitment to representing scientists and professors before institutional boards, in administrative hearings, and during litigation proceedings.

Before embarking on his legal career, he served as the Founding Editor-in-Chief of BioProcessing, a prestigious peer-reviewed journal dedicated to the industrial biotechnology industry. His journalism career includes significant roles such as Associate Managing Editor of Genetic Engineering News, a leading trade publication in the biotechnology field. Additionally, Mr. Chen served as Managing Director and Editor for a group of science websites within the VerticalNet e-commerce family. He continues to contribute to the field as a board member of the journal Biotechnology Law Report, where he also held the position of Editor-in-Chief.

Mr. Chen’s legal acumen and extensive experience make him an invaluable asset to the firm’s Intellectual Property and Brand Management Practice Group, as well as a respected figure in the field of Intellectual Property law.

Publications

Lucien has made substantial contributions to legal scholarship through various publications. Some of his notable works include:

• “Biosimilar Companies Chipping Away at Humira, but No Death Knells Yet” – Biotechnology Law Report, 36(3): 75-77 (2017).
• “After Two Years, Alice Is Still Stifling Life Sciences Patents; But the Tide May Be Shifting at the Federal Circuit” – Biotechnology Law Report, 35(5): 239-244 (2016).
• “Clarity Emerging on Personal Jurisdiction in Pharma and Biologics Litigation” – Biotechnology Law Report, 35(2): 55-59 (2016).
• “Patenting Nanotech Inventions: Strategic Early Positioning May Protect Portfolio Once Litigation Emerges” – Industrial Biotechnology; 1:3: 153 (2005).
• “Enablement in the Spotlight: Federal Circuit applied foreseeability standard for biotech patents” – National Law Journal; June 16, 2003.
• “Chemdex Closing, Shifts E-Marketplace Picture” – Genetic Engineering News; 21:1: 12 (2001).
• “Mass Spec Leads News from PittCon: Life Scientists Welcome Increased Data” – Genetic Engineering News; 20:7: 12 (2000).
• “PE and HP to Divide Operations: Both Realignments Will Allow the Companies to Focus on Core Business” – Genetic Engineering News; 19:7: 11 (1999).
• “O.J. Simpson Case Sparks a Flurry of Interest in DNA Fingerprinting Methods” – Genetic Engineering News; 14:14: 1 (1994).
• “Transgenic Mice Surge Toward Acceptance in the Marketplace” – Genetic Engineering News; 13:19: 1 (1993).
• “Modulation of epidermal growth factor receptors by gamma interferon in a breast cancer cell line” – Anticancer Research; 11: 347 352 (1991).
• “Density dependent regulation of epidermal growth factor receptor expression” – Pathobiology; 59: 329 334 (1991).
• “Enhancement of anchorage independent growth of a human adrenal carcinoma cell line by endogenously produced basic fibroblast growth factor” – International Journal of Cancer; 46: 516 521 (1990).

Areas of Practice

• Intellectual Property and Brand Management

Admission

• New York
• United States Patent & Trademark Office
• United States Supreme Court
• United States District Court for the Southern District of New York
• United States District Court for the Eastern District of New York
• United States District Court for the Eastern District of Texas

Education

• B.A., Johns Hopkins University
• M.P.H., Columbia University
• J.D., St. John’s University School of Law