Duo Chen Touches Every Piece of Box’s IP Puzzle

Duo Chen has long balanced her passions for tech and the law.

After earning a bachelor’s degree in electrical engineering from George Washington University and a master’s degree focusing on telecommunication and computers from the University of Maryland, she obtained her law degree from Georgetown.

“My interest in law started in college, when I saw some friends from engineering school go on to study law. They taught me about how intellectual property, as a specialization, allows you to leverage the skill set you learn as an engineer,” explains Chen, now the senior director of intellectual property at Box, an online file-sharing and cloud-based content management service.

Chen started her career as a patent examiner with UPSTO. “I was really intrigued by the newest and latest things people were coming up with but also challenged by the legal issues,” she recalls. “It was the best of both worlds.”

Thanks to her electrical engineering and computer science background, Chen was in demand as a patent litigator in the Bay Area. Following stints as an associate at law firms Latham & Watkins and Orrick, Herrington & Sutcliffe, Chen started a three-year run as IP counsel at SAP Labs in 2005. She then spent the next six years as senior managing counsel for Oracle.

“At the patent office, I dealt with the nitty-gritty of patent applications early on. Once I started to work with law firms, I explored more of the litigation aspects, which involved patents and other forms of IP, to round out my skill set,” Chen notes. “I learned what needs to be taken into consideration once someone has the patent and is licensing or doing deals.”

The opportunity to become Box’s first ever IP in-house counsel came along in 2014, about six months before the company filed for an initial public offering. Chen seized the chance to formulate the company’s IP strategy and make a direct impact on business growth.

She calls those early days “interesting” and an “eye-opener.” She explains, “Initially, when I came in, there was a lot of effort learning what had been done and how to reposition it to build a program that made sense. There just wasn’t an internal process or cultural knowledge space.

“On the one hand, I had to do a lot of hand-holding and training, which I really enjoy doing because you get to work with the engineers firsthand. On the other hand, I brought some new technologies in, such as a patent management system.”

The patent management system gives inventors the ability to come in and self-service their inventions and disclosures, allowing Box to better manage its patent portfolio.

“It’s always my goal to work with engineers, knowing that fighting for patents is important for the business but is not their core responsibility. They need to spend most of their efforts in building new product features and making sure all the product runs smoothly and in a secure fashion,” Chen states. “My goal coming in is to make sure that with the patent filing, protection, or IP work, I minimize their effort and make it as easy as I can for them.”

Chen enjoys working as an integral part of the Box team, at the cutting edge of new technology.

“I like to challenge the engineers to think beyond what they are currently building,” she says. “We often do brainstorm sessions and think a little bit further about what else we can do to make our product even better.”

Compared to when she focused almost exclusively on patents at larger corporations, Chen finds her work at Box allows her to touch every piece of the IP puzzle needed for a company to operate. This means she works closely with branding, marketing, and product teams to properly protect the Box brand.

Now, with the foundational pieces in place, Chen’s plans for the future include fine-tuning Box’s processes, continuing to support all business growth, and bringing in more technology to help manage the IP portfolio more easily and efficiently.

“I’ve always held the view of wanting to go deep into areas I specialize in, but I’m also interested in broadening my knowledge areas,” Chen shares. “IP really touches on everything. It’s a key piece when we’re engaging with other companies, and we need to think strategically on where and how it makes sense to build internally or collaborate. That keeps everything more interesting.”

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Vista IP Law Group:

“Duo Chen is a smart, dedicated attorney that is well versed in all aspects of IP law.  She brings both unparalleled experience and thoughtful insight to consistently come up with practical solutions to very complex and thorny legal issues.”

–Peter Mei, Partner