William Cheng

Drawing from a unique combination of patent prosecution, patent licensing, and patent examination experience, Will Cheng provides his clients with a true all-around perspective in crafting patent prosecution strategies directed to obtain the strongest patent protection possible.

Will has prepared and prosecuted patent applications, performed due diligence work, and managed patent portfolios in the computer software, computer network, wireless communications, consumer products and electronics, lighting, medical device, surgical instruments and methods, business methods, biotechnology, and gaming device fields for a variety of clients, including startup companies, Fortune 500 companies, and universities.

Prior to joining Dickinson Wright, Will prepared and prosecuted patent applications as a member of several prominent Silicon Valley patent firms and as the in-house patent counsel of one of the world’s largest spinal medical device companies.

During his tenure at the U.S. Patent & Trademark Office, Will was responsible for implementing USPTO examination procedures, particularly pertaining to 35 U.S.C. § 101 subject matter rejections and responsible for assisting judges in adjudicating ex parte software patent appeals cases in his role as a judicial law clerk on the Patent Trial and Appeal Board.

Education & Credentials

Education

Baylor University

B.S., Neuroscience and Biology, 2005

University of San Diego School of Law

J.D., 2009

Bar Admission

  • California

Acknowledgements

  • Clerkship, Hon. Hubert Lorin, United States Patent & Trademark Office Patent Trial and Appeal Board, 2014

Professional Involvement

  • San Francisco Bay Area Intellectual Property Inn of Court, 2014-present
  • Asian Pacific American Bar Association - Silicon Valley, 2014-present
  • Pauline Newman Intellectual Property Inn of Court, Former Webmaster, 2012-2014
  • Asian Pacific American Bar Association - Washington, D.C., 2013- 2014

Community Involvement

  • Surfrider Foundation, 2015
  • Giles Rich Intellectual Property Inn of Court, 2012-2013

Publications/Presentations

  • Protecting Intellectual Property Rights, California Grocer, Issue 3, June 2017
  • Effect of Williamson v. Citrix on Software Patents, Presenter, 2015

  • Patent Litigation: Legal Ethics, Presenter, SF Bay Area IP Inn of Court, 2015

  • ITC § 337 Litigation, Presenter, Pauline Newman IP Inn of Court, 2014

  • AIA: Inter Partes Review and Post Grant Review, Presenter, Pauline Newman IP Inn of Court, 2012

  • Patent Concepts of Medical Device Design, Presenter, UC Santa Cruz Extension, 2009

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