Wan Chieh (Jenny) Lee - Counsel
212-619-6000, ext. 205
• J.D., Benjamin N. Cardozo School of Law, Yeshiva University, 2005
- Dean’s Merit Scholarship
- Cardozo Journal of Conflict Resolution, Staff
- Summer Program on Comparative Media Law and Policy, Oxford, U.K.
- Intellectual Property Law Society, Co-president
• B.S. in Chemical Engineering Biomedical Engineering minor, Massachusetts Institute of Technology, 2002
- Bioengineering Undergraduate Research Award
- Polymer Science Laboratory, Teaching Assistant
• New York
• Court of Appeals for the Federal Circuit
• U.S. District Courts for the Southern and Eastern Districts of New York
• U.S. Patent and Trademark Office
• Mandarin Chinese
Wan Chieh (Jenny) Lee is a Counsel at Fay Kaplun & Marcin LLP.
Ms. Lee’s practice encompasses all areas of intellectual property, focusing on patent due diligence, freedom to operate reviews, transactions and negotiations involving patent rights, patent licensing, strategic counseling and procurement of worldwide patent rights, complex proceedings (e.g., patent reexaminations, reissue applications, supplemental examination, and administrative appeals) before the United States Patent and Trademark Office (USPTO), and patent litigation.
Ms. Lee has experience providing strategic counseling to clients in the pharmaceutical, biotechnology and medical device industries, with a particular emphasis in pharmaceutical/biologics patent life cycle management, patent validity analysis, and issues under the Hatch-Waxman Act and the Biologics Price Competition and Innovation Act of 2009. Her experience spans a broad range of technologies within the pharmaceutical and biotechnology industries, including small molecule compounds, pharmaceutical formulations, combination therapies, antibodies, vaccines and diagnostic assays. She also has experience working with a variety of other technologies including polymer technology, cosmetic products and devices, chemical products and processing, manufacturing process controls, mechanical devices, paper products, and business methods.
During her time at MIT, Ms. Lee participated in cardiac and cartilage tissue engineering research using polymeric scaffolds in Professor Robert Langer’s laboratory, for which she earned the school’s bioengineering undergraduate research award. Additionally, she researched and studied drug delivery coatings for cardiovascular stents, and served as a teaching assistant for the undergraduate polymer chemistry laboratory. Ms. Lee also worked at a major pharmaceutical company where she designed and conducted experiments related to pharmaceutical manufacturing processes.
Ms. Lee is an active member of the New York Intellectual Property Law Association and is currently co-chair of its Website and Records Committee, has been a member of its Continuing Legal Education (CLE) Committee since 2008, and served a member of its Conner Writing Competition Committee in 2011-2012. She is also a member of the American Intellectual Property Law Association, a member of the Licensing Executives Society, and a member of the Pharmaceutical & Biotechnology issues Committee of the Intellectual Property Owners Association. Additionally, Ms. Lee is an active member of the Asian American Bar Association of New York.
Publications and Appearances:
• Hon. Theodore R. Essex and Wan Chieh (Jenny) Lee, “Litigating Before the International Trade Commission,” Paper for AIPLA Spring Meeting (May 2013)
• Moderator for Panel for “Ethical Considerations in Patent Prosecution and Litigation,” NYIPLA 2012 Fall One-Day Patent CLE Program (January 17, 2013)
• Co-presenter for “FDA and USPTO Overview,” ACI Hatch-Waxman Bootcamp (June 25-26, 2012)
• Co-presenter for “Are Diagnostics Still Patentable? Bilski and its Impact on the Life Sciences,” 4th Annual King & Spalding Pharmaceutical University (November 29, 2011)
• “Post Grant Review Under the AIA,” King & Spalding Intellectual Property Newsletter (September 2011)
• Moderator for Patent Litigation Panel, NYIPLA 2010 Fall One-Day Patent CLE Program (November 4, 2010)
• Ethan Horwitz and Wan Chieh (Jenny) Lee, “Opposition sustained due to lack of good-faith intent to use,” World Trademark Review (July 23, 2010)
• Ethan Horwitz, Kenneth Sonnenfeld and Jenny Lee “Bilski and Beyond: The Impact of Bilski Decision for Biotech,” BioWorld Perspectives (July 22, 2010)
• Co-presenter regarding biosimilar pathway and brand name exclusivity provisions, King and Spalding Healthcare Roundtable, Healthcare Reform Law: Implications for Pharmaceutical, Biotech, and Medical Device Manufacturers (April 9, 2010)
• “New Patent Dispute Process for Biologics,” King & Spalding Client Alert (March 25, 2010)
Moderator for Patent Prosecution Updates Panel, NYIPLA 2008 Fall One-Day Patent CLE Program (November 7, 2008)
• Mahmood TA, Riesle J, Li SH, Lee WC, van Blitterswijk CA, and Langer R, “Dynamic Culture of Primary Chondrocytes on Porous β-TCP and HA Scaffolds in Spinner Flasks: Effects of Pore Size and Cell Seeding Density,” Key Engineering Materials Vol. 219-220, Bioceramics 14, pp 257-260 (2002).