Santa Clara University School of Law is proud to count as one of its shining stars Associate Professor Colleen Chien, who recently rejoined the faculty from a stint as White House senior adviser, Intellectual Property and Innovation, in the Office of Science and Technology Policy. In that role, she worked on setting national patent and intellectual property policy, and used innovation policy to boost access to innovation, particularly by the underserved.
Professor Chien attracted the attention of the White House after a half-dozen years of scholarship focused on domestic and international patent law and policy issues. Her impact in her field had already attracted the admiration and respect of her peers in academia and industry, who named her one of the 50 Most Influential People in the World in Intellectual Property, a Silicon Valley Woman of Influence, and Eric Yamamoto Emerging Scholar.
A Troll by Another Name
Prof. Chien coined the term “patent assertion entity” or PAE, to describe those who use patents primarily to demand payments from potential infringers rather than to advance or commercialize novel technology – sometimes known as “patent trolls” by critics. Her first use of the term came in the fall of 2010, in an article published in the Hastings Law Journal.
The influence of this concept and term have been considerable. It has been adopted and used by a number of relevant government innovation bodies.
- Congress ordered a study of “patent assertion entities” in the 2011 America Invents Act
- The Federal Trade Commission used Chien’s work as the basis for hearings on “Patent Assertion Entity Activity” which Chien keynoted in December 2012, and conducted and published a study on the topic pursuant to its 6B authority in fall 2016.
- The White House published an entire report in June 2013, on “Patent Assertion and U.S. Innovation,” that drew heavily from several of Chien’s papers.
A 2017 search of academic articles on Lexis Nexis and JSTOR found over 503 law references (including 350 law review articles) and 2,616 social science references (including 2,305 journal references) to the term “patent assertion entity.” A 2015 law review article published in the Stanford Technology Law Review reported that the top 10 U.S. newspapers had published at least 130 articles featuring the term.
The Impact of PAEs and Chien’s Scholarship
Following her 2010 Hastings Law Journal paper, Chien subsequently published studies of the impact of PAE demand letters and lawsuits on startups and venture capitalists, on end users and customers and of parallel historical eras.
She twice testified before the House Judiciary Committee of Congress, as well as numerous times before the DOJ, the FTC, and PTO on her work, which she disseminated through numerous op-eds she authored or co-authored for the New York Times, Wall Street Journal, Washington Post, TechCrunch, WIRED, IP Watchdog, and PatentlyO.
Chien’s influence as an organizer and collaborator within the academic community may be as great as her influence as a scholar. In the fall of 2010 she organized a conference at Santa Clara “Solutions to the Software Patent Patent Problem?” and co-curated an accompanying series in WIRED magazine in which speakers from the conference summarized their key “fixes” to the patent system. She has also collaborated on numerous op-eds, papers, comments, and amicus briefs.
Several of the policy recommendations made by Chien and her collaborators, as well as those whose work she has elevated, have been adopted by governmental entities at some level:
- The Supreme Court has moved to tighten functional claiming, as Prof. Mark Lemley recommended in his WIRED oped and accompanying law review article;
- The USPTO adopted a “dictionary pilot” in order, as Prof. Peter Menell recommended in his WIRED oped;
- 32 states have adopted legislation to outlaw problematic patent demand letters, a problem first identified by Chien in her 2012 survey, Startups and Patent Trolls; the USPTO and White House also adopted the recommendation she made in testimony to Congress and established a patent demand letter information website;
- The Supreme Court issued two decisions making it easier to award attorney’s fees in patent cases, after Chien’s recommendation in testimony and her New York Times op-ed with then-Federal Circuit Chief Judge Rader and Prof. David Hricick;
- The ITC and the White House moved to stay and deny injunctions in the public interest following a New York Times op-ed, a law review article, and an amicus brief at the ITC authored and led by Chien and Prof. Mark Lemley;
- Congress has proposed and advanced bills that would focus and prioritize early adjudications of preliminary motions, before expensive discovery is taken and also protect customers from lawuits, as recommended by a 500+-practitioner survey Chien authored with her research assistants, Santa Clara Best Practices in Patent Litigation Survey and in testimony;
- The Supreme Court has accepted a case to address the patent-troll favored tactic of forum shopping, as Chien and Michael Risch recommended in a Washington Post editorial and law review article; Chien, along with Profs. Mark Lemley, Arti Rai and Brian Love, led briefs at the petition and merits stages joined by over 50 other academics urging the Supreme Court to curb the practice in patent cases.
Chien joined the Santa Clara Law faculty in 2007. Prior to that, she was an associate and then special counsel at Fenwick & West LLP in San Francisco. She has been a fellow at the Stanford Center for Law and the Biosciences, and visiting senior scholar at Berkeley Law’s Center for Law and Technology. She also worked as a strategy consultant at Dean and Company, a spacecraft engineer at NASA/Jet Propulsion Lab (while on leave from college), and an investigative journalist at the Philippine Center for Investigative Journalism (as a Fulbright Scholar). She received her J.D. from Boalt Hall School of Law, University of California, Berkeley and an A.B. and B.S. in Engineering from Stanford University, with distinction and honors. Chien and her husband Dirk Calcoen have two sons.