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Tom Chen

| Sep. 22, 2016

Sep. 22, 2016

Tom Chen

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Haynes and Boone LLP

When PayPal Holdings Inc. spun off from online auctioneer eBay Inc., the e-commerce company needed a trusted advisor to implement new stand-alone strategies for its extensive patent portfolio.

Enter Chen, whose decadelong relationship with PayPal dates back longer than his tenure with Haynes and Boone. Chen has even worked with PayPal longer than many of its in-house lawyers.

Chen supervises about 30 Haynes and Boone patent attorneys who work primarily with PayPal and its portfolio. Each week, Chen and his firm colleagues collaborate with a growing in-house team at PayPal to determine whether certain inventions are better suited for a patent application or trade secret protection.

"The big change is how we are interfacing with PayPal's in-house counsel," Chen said about his team. "It's really putting in specific procedures on how information is made available to in-house and outside counsel."

Some of the recent patent applications PayPal has submitted to the U.S. Patent and Trademark Office range in topic from digital payments through smartphones to user authentication and biometric security.

Chen can talk shop with PayPal inventors and innovators because of his engineering background. He was at Hughes Aircraft Company before pivoting into a legal career.

That expertise can be invaluable, especially with the U.S. Supreme Court more closely scrutinizing whether software and applications are eligible for patent protection.

"It allows people like me to write better applications," Chen said about bringing his engineering experience to bear. "You're not copying and pasting what the inventor is saying, you're building upon what the inventor is saying.

"Tech companies like to see firms with technical experience," he added.

Chen is also actively involved in firm leadership as a member of its Board of Directors as well as the board's executive committee.

Chen is also on the firm's partner compensation and diversity steering committees.

— Kevin Lee

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