Mandy Song, Ph.D. is a Founding and Managing Partner with Bayes PLLC. Mandy brings more than a decade’s experience in patent practice, including patent prosecution, client counseling, patent portfolio management & transactions, patent litigation in U.S. federal district courts and Section 337 investigations at the U.S. International Trade Commission (ITC), and post-grant proceedings before the Patent Trial and Appeal Board (PTAB) of the U.S. Patent and Trademark Office (USPTO). She has significant experience in a wide range of electrical, computer, and biomedical technologies.
Mandy is a seasoned attorney on patent office practice. She manages the development of large patent portfolios for more than a dozen clients. She has personally drafted, filed, and prosecuted thousands of patent applications before the USPTO. She routinely interviews inventors to develop invention disclosures, drafts new patent applications in a broad range of complex technologies, conducts interviews with patent examiners, and appeals final rejections to the PTAB.
Mandy’s extensive litigation experience includes pre-litigation due diligence, managing all aspects of fact and expert discovery, motion practices, orchestrating complex claim construction analysis and briefing, taking and defending depositions, summary judgment briefing, hearings, and trials in both litigation and PTAB matters. She is also experienced in discovery dispute resolution and settlement negotiations.
Mandy serves clients of all sizes, from startups to conglomerates with global presence. She has worked with clients all over the globe and travels extensively to work on-site with clients to address their intellectual property needs.
Mandy often presents at CLE programs on topics such as U.S. patent prosecution practice, patent litigation and PTAB proceedings, industrial standards and related patent issues, and due diligence for patent matters. She has been an adjunct professor of legal writing at George Washington University Law School and an invited speaker on patent law to Duke University Pratt School of Engineering. She also serves as a mentor to Duke University’s startup incubator, DUHatch.
Prior to founding Bayes PLLC, Mandy practiced for more than ten years at Finnegan, Henderson, Farabow, Garret, and Dunner, LLP.
In Part II of this series, we reviewed three of the most popular jurisdictions for global patenting and their foreign filing restrictions for cross-border inventions. Our final article in this series will discuss how an applicant’s failure to comply with foreign filing restrictions may result in various penalties, ranging from invalidation of the patent to criminal consequences accompanied by fines, and even imprisonment. Before strategically planning the global patent filing of a new invention, the first step for a practitioner is to gather the relevant information. Because the foreign filing requirements vary greatly among countries, information beyond simply name and address of each inventor (or applicant if different from the inventor) needs to be collected. Given that some countries’ foreign filing license requirements are based on residency as well as nationality, it is necessary to know the citizenship and/or residency status of each inventor.
In Part I of this series, we provided an overview of foreign filing restrictions for cross-border inventions around the world. For a deeper examination, we will narrow our focus to some of the most common countries for filing. The United States, China, and India are among the most popular patent filing venues in the world. While all three countries require a Foreign Filing License (FFL) before filing abroad or otherwise first filing in the home country, the specific requirements vary.
With the rapid development of communication technologies, the world is more connected than ever. As the academic communities are drawn closer, international research collaborations increase dramatically. Researchers and scientists from all over the world often come together to make new inventions….. Such global collaboration can result in exciting innovations for which the inventors or their employers often would like to seek patent protections. Due to the “global” nature of these inventions, it is only natural that the applicants desire to patent them in multiple countries to maximize the rights. However, while science and technology observe no national borders, patent protections and related regulations do.