Alex Y. Nie

Dr. Alex Nie is a partner in the Intellectual Property Practice Group in the firm's Silicon Valley office.

Areas of Practice

Dr. Nie’s practice focuses on global intellectual property (IP) protection strategy and technology transfer issues, including patent procurement and enforcement, IP valuation and monetization, licensing, and technology transfer.

Dr. Nie’s multidisciplinary technical background enables him to advise a broad spectrum of technology companies on patent issues. His technical training includes a Ph.D. degree in biochemistry, a M.S. degree in computer science and graduate courses in statistics and engineering. Within biotechnology, Dr. Nie’s focus includes biologics, pharmaceutics, in vitro diagnostics, and stem cell technology. In high technology, Dr. Nie works with industry and academic clients in the fields of autonomous driving, artificial intelligence, data mining and data security.

Dr. Nie’s diverse technical background helps him address patent issues in interdisciplinary technologies, such as personalized medicine, pharmacogenomics, biomedical instrumentation (e.g., next generation sequencing), digital and mobile health and in general computational biology and chemistry.

Born in China and being a native Chinese speaker, Dr. Nie is active in US-China legal practice. Dr. Nie advises multinational companies on technology transfer and M&A deals with Chinese companies and represents Chinese technology companies in their expansion to the US market.

Dr. Nie was a former President and a current board member of Chinese American Lawyers of the Bay Area (CALOBA), a major Chinese lawyers’ association in the US. He is a member of BayHelix, an organization of leaders of Chinese heritage in the global life sciences and healthcare community. He was also the Director of the 2013 Annual Conference of Hua Yuan Science and Technology Association (HYSTA), the signature event of Silicon Valley’s most prestigious entrepreneurship organization connecting China and the US. Earlier, Dr. Nie was part of a US delegation to discuss IP enforcement issues with China’s State Council and represented California Institute for Regenerative Medicine (CIRM), California’s Stem Cell Agency, to negotiate a collaboration agreement with China’s Ministry of Science and Technology.

Prior to his legal career, Dr. Nie was a senior scientist with Johnson & Johnson Pharmaceutical R&D, L.L.C. During his seven-year tenure at the company, Dr. Nie developed new biomarkers for drug safety evaluation using genomics, machine learning and statistical approaches. He was a Johnson & Johnson representative to the Critical Path Institute, an industry-wide collaborative effort to improve the drug approval process.

Dr. Nie has published 26 peer-reviewed scientific articles and two book chapters. He received an NIH grant and has served as a committee member for various scientific organizations, including the International Life Science Institute/Health and Environment Sciences Institute (ILSI-HESI), the Critical Path Institute, and FDA’s HL7/CDISC/I3C Pharmacogenomics Data Standards Committee. He was a session chairman and invited speaker at the Drug Information Association (DIA)’s 2006 annual conference in Paris.

Dr. Nie is a member of the State Bar of California, and is registered to practice before the United States Patent and Trademark Office.

Articles

• Chapman and Nie, “The Entrepreneur’s Guide to Forming a High Technology Company: What Every Entrepreneur Should Know About Intellectual Property,” published in The Computer & Internet Lawyer (February, 2013)
• Wang, Nie and Alaedini “In-licensing for Growth: Importance and Impact of In-licensing for Chinese Pharmaceutical Companies,” published in Pharma Asia (May 2012)
• Lin, Nie and Chapman “Trade Secret Protection in China: A Perspective From China and Hong Kong,” published in Foley & Lardner LLP Winter 2013 Eye on China Newsletter (January 3, 2013)
• Ni and Nie “An Overview of Amendment of Invention Patent Applications Under Chinese Patent Law,” published in Foley & Lardner LLP Spring 2011 edition of Legal News: China Quarterly Newsletter, Eye on China (April 22, 2011)
• Best, Carsten and Nie, "Ninth Circuit," Ch. 10 in Patent Obviousness in the Wake of KSR International Co. v. Teleflex Inc., (Paul. M. Rivard and Alan Gardner, eds., 2010)
• Konski, Brinckenhoff and Nie, "Genes Under the Microscope – Novel or Not?" published in Intellectual Property Today (July 2009)
• Fielden and Nie et al., "Interlaboratory evaluation of genomic signatures for predicting carcinogenicity in the rat," published in Toxicological Sciences (vol 103, pages 28-34, 2008)
• Nie et al., "Predictive Toxicogenomics Approaches Reveal Underlying Molecular Mechanisms of Nongenotoxic Carcinogenicity," published in Molecular Carcinogenesis (vol 45, pages 914-933, 2006)
• Nie, McMillian and Lord, "Toxicogenomics in Drug Safety Evaluation: Bridging Drug Discovery and Development," published in Carmen and Hardiman eds. Biochips as Pathways to Drug Discovery. Florida: Taylor & Francis Group (pages 69-96, 2006)

Labor & Employment Law Blog Posts

• "U.S. and China Strike Visa Deal," November 11, 2014

Intellectual Property Law Blog Posts

• "PTAB Rulings Shed Light On Quantum Computing Patents," June 13, 2024
• "Federal Circuit Confirms Addition of Two Inventors of Groundbreaking Immunotherapies for Cancer," July 15, 2020
• "Machine Learning Patentability in 2019: 5 Cases Analyzed and Lessons Learned Part 5," March 31, 2020
• "Congress Gives Patent and Trademark Office Temporary Authorization to Move Deadlines in Light of COVID-19 Pandemic" March 27, 2020

• "Machine Learning Patentability in 2019: 5 Cases Analyzed and Lessons Learned Part 4," March 12, 2020

• "Machine Learning Patentability in 2019: 5 Cases Analyzed and Lessons Learned Part 3," March 3, 2020

• "Machine Learning Patentability in 2019: 5 Cases Analyzed and Lessons Learned Part 2," February 18, 2020

• "Machine Learning Patentability in 2019: 5 Cases Analyzed and Lessons Learned Part 1," February 5, 2020

• "Federal Circuit Weighs in on Patent Subject-Matter Eligibility of Dietary Supplements," March 21, 2019 

Media Mentions

Speaking Engagements

• “Current Status of IP Enforcement and Protection in China,” UC Berkeley China Forum, Berkeley, California (November 17, 2013)
• “How does the new patent law impact the research of biotech scientists and managers,” 44th ACS Western Regional Meeting, Santa Clara, California (October 3, 2013)
• “The Age of Personalized Medicine: Trends and Opportunities Reflected in the U.S. Experience,” ChinaBio Executive Workshop, Shanghai, China (April 17, 2013)
• “Cross-Border Technology Transfer to China: Traps, Pitfalls, and Critical Issues,” Foley’s Eye on China, Palo Alto, California (September 20, 2012)
• "Doing Deals in China - Protect Your Intellectual Property," CalCPA’s Asia Business Forum: How to Find Your Dragon, San Jose, California (May 19, 2013)
• "Cross-Border M&A in China: A New Paradigm for IP, Engineering Talent, and R&D Capability," Foley’s Eye on China, Palo Alto, California (October 25, 2011)
• "Protecting Your Innovation in China," Foley’s Eye on China, San Diego, California (December 10, 2009)
• "Stop Copyists From Undercutting Your Innovation," Foley’s Eye on China, Palo Alto, California (December 8, 2009)
• "U.S. Perspective of Patent Enforcement in China," 2009 U.S.-China Legal Exchange, Los Angeles, California (October 12, 2009)
• "An Analysis of the Characteristics of Licensed Clean Tech Patents from Publicly Announced Commercialization Deals," the 5th International Congress of Nano-Bio Clean Tech 2008 conference, San Francisco, California (October 27-30, 2008)
• "Preparing the Critical Path to Acceptance of Toxicogenomic Data in Drug Safety Evaluation," the 2007 Joint Statistics Meeting, Salt Lake City, Utah (July 26 – August 2, 2007)
• "Bioinformatics Lighting a New Path to Better Drug Development," the Drug Information Association 18th Annual EuroMeeting, Paris, France (March 6-8, 2006)

Events