Tani Chen, ScD

Overview

Tani Chen is a patent prosecutor with a particular focus on early-stage technologies, small businesses, and university research. He helps companies develop strong IP protection based on their business goals and potential threats from competitors.

Tani counsels clients in a wide variety of areas, including biomolecular engineering, nanotechnology, tissue engineering, drug delivery, fuel cells, chemical processes, and analytical devices.

Known for his ability to distill complex topics, Tani enjoys working with start-up companies to help strengthen their competitive positions in the marketplace through patent prosecution, trade secret protection, diligence of competitor interests, identification of whitespace, and potential barriers to entry, and the like, and pays close attention to their business outlook when formulating strategy.

Tani is also very active in the Boston innovation ecosystem and has successfully mentored entrepreneurs and student teams for the MIT 100K and other business plan competitions, including numerous that have made it to the final rounds. In addition, Tani is a regular guest lecturer on patent basics at several area schools.

Prior to joining Wolf Greenfield, Tani was a Research Fellow at Harvard Medical School and Massachusetts General Hospital and Shriners Hospital for Children, focusing on engineering approaches for preserving biological materials under cryological and desiccant conditions. Tani’s doctoral work at MIT studied techniques for drug delivery across human skin using a pulsed, high-voltage electric field. Tani has also performed several research studies and design projects as a consultant for the Dow Chemical Company and the US Army at the Natick Research, Development and Engineering Laboratories.

Experience

• Managed the patent estate for an early-stage pharmaceutical company, originally filed pro se, including developing the estate to include nearly 50 families of applications. Oversaw the licensing of various aspects of the estate to two major pharmaceutical companies in business deals that were valued in the hundreds of millions of dollars.
• Took over management of an IP portfolio for a start-up company in the cleantech space, including several applications filed by other law firms, and worked closely with the company to refocus its IP portfolio and R&D efforts on the business goals identified by the company without significantly increasing IP expenditures. The company’s improved focus has been helpful for identifying commercialization partners as the company grows beyond its original founding team.
• Managed a complex portfolio of closely-related patent families in the microfluidics space on behalf of a leading research university. There are over 75 different patent families with eight different licensees, with several new start-up companies currently planned to commercialize various portions of the portfolio. 
• Wrote a key patent application for a leading research university under severe time constraints (less than 24 hours) in advance of an upcoming publication in Nature that was appearing the next day. The technology was subsequently licensed to a large Japanese equipment manufacturer, in large part due to the comprehensiveness of the patent application even over the Nature publication, and annual sales of the technology now reach tens to hundreds of millions of dollars. 
• Managed the patent portfolio of a medical device start-up as it grew from just the two founders to approximately 50 employees and FDA approval of its beachhead product, including overseeing diligence during several investor funding rounds. In that time, the patent filings of the company have grown from its initial founding application to a complex of nearly 40 patent filings, covering various chemical, mechanical, fluidic, and biosensor aspects of the device. 
• Expanded the patent portfolio of a closely-held pharmaceutical company from three initial provisional applications filed by another firm to a large, diverse collection of patent filings, leading to over 70 issued US patents that form a core component of the company’s business objectives. Valuation of the company’s IP estate is estimated in the millions of the dollars.
• Managed the IP portfolio for a spin-out from a leading research university that encompasses advanced technology with the potential to fundamentally remake the energy space in a profound way. The IP encompasses almost 40 families and valuation of the spin-out has quickly reached hundreds of millions of dollars. Also created a novel system for managing IP decisions given the complexity of both the IP portfolio itself, as well as the interface with the university regarding decision making and co-ownership issues.
• Developed the patent portfolio of a Chinese drug development company and its international subsidiaries. The portfolio required careful management of international issues and an understanding of the differences in the laws of each country, since much of that work has been performed by research teams working on different continents.
• Expanded the patent portfolio of a materials-based start-up emerging from a leading research university from a single pro se filing by its two founders into a complex of several key filings that were instrumental in attracting investment, leading to rapid growth of the startup. The startup now sells a variety of materials covered by those filings and has been quickly expanding both its sales and its headcount.
• Managed the IP estate for a company that has been creating various tools for use in the materials space, including filings directed to software platforms in addition to chemical compositions. Also worked with the company to identify and protect several valuable trade secrets, and to develop a pathway for rapidly filing new IP based on the tools it has created.

Activities

• American Bar Association
• American Chemical Society
• Asian American Lawyers Association of Massachusetts
• Boston Intellectual Property Law Association

Recognition

• Named to the list of Massachusetts Super Lawyers for intellectual property law 
• Cleantech Open Northeast Lead Mentor of the Year (2023) 

Interests

Tani has a patent in the area of controlling molecular transport under pulsed electric field conditions by adding certain chemicals during pulsing.

Tani was the lead author of two of the top 10 cited articles between 2000-2009 in the scientific journal Cryobiology.

Tani ran several weekly radio shows for a number of years on WMBR, MIT’s radio station, including shows directed to indie new age and C-pop (including Mandopop and Tai-pop) music. He also was involved in station management and directed the training of new DJs at the station. A paper about some of his on-air work was published in the Skeptical Inquirer.

Tani created a board wargame on the history of China, entitled China: The Middle Kingdom, now published by Decision Games. He also published an article on Chinese military history in the journal Strategy & Tactics.

Tani has volunteered as a coach for the MIT Lincoln Laboratory’s robotic outreach program, which sponsors teams of grade school students for the FIRST® LEGO® League (FLL) competition. In 2017, his team won the first-place trophy in Computer Programming at the Massachusetts state FLL tournament.