Penina Michlin Chiu

Ms. Chiu has been a member of FDLaw since 2006.  Her legal practice focuses on Intellectual Property matters, Commercial Transactions and Business and Corporate Law.

Ms. Chiu was admitted to practice before the U.S. patent office in 2008 and has extensive experience prosecuting patents and managing international patent portfolios. Her patent practice currently focuses in the areas of mechanical engineering and computer technology. She has a strong background in a broad range of technologies from oil and gas technologies such as submersible pumps and offshore natural gas to electronic gaming. In addition to prosecuting patents, Ms. Chiu represents clients in reexamination proceedings and before the Patent Trial and Appeal Board, and provides opinions related to invention novelty, freedom to practice and patent validity.
Ms. Chiu has extensive experience with trademark prosecution and the management of international trademark portfolios. Ms. Chiu provides trademark availability opinions, assistance with branding issues, as well as representation with respect to opposition proceedings before the Trademark Trial and Appeal Board. Ms. Chiu also represents clients in trademark litigations in federal court, including priority and infringement disputes.

In addition, Ms. Chiu provides advice regarding intellectual property licenses, and the treatment of intellectual property in commercial transactions and entity formations.

Ms. Chiu also has experience working with banks, PE Funds, and major international companies in the areas of M&A, entity formation and other corporate and business functions.   This includes substantial experience in helping firms manage their FCPA compliance issues.

Prior to joining Frederic Dorwart, Lawyers PLLC in 2006, Ms. Chiu completed a judicial clerkship with Judge Edward C. Prado of the United States Court of Appeals for the 5th Circuit. She also completed an externship with Judge Ronald M. Whyte of the Northern District of California, and a summer associate position at the United States Department of Justice in the Computer Crimes and Intellectual Property Section, in Washington DC. Prior to law school Ms. Chiu was a staff scientist at a patent litigation firm in Los Angeles.

Ms. Chiu received her J.D. from UC Berkeley at Boalt Hall where she received awards for excellence in Legislation and Intellectual Property. Ms. Chiu was an Executive Editor of the California Law Review and a member of the Berkeley Technology Law Journal. Ms. Chiu received her S.B. from MIT in Materials Science and Engineering, with a minor in Physics. 

Ms. Chiu is a member of the Board of Trustee's Audit Committee at La Jolla Country Day School and a member of the MIT Educational Council.

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