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Michael D. Van Loy, PhD

Member

MDVanLoy@mintz.com

+1.858.314.1559

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Michael is a skilled patent attorney and technology protection strategist. He works with both growing and established companies to create, manage, and improve patent portfolios both in the US and worldwide. He works closely with experts in key patent jurisdictions worldwide to maximize enforceability and business value of clients' intellectual property rights.  Michael also advises clients on business-critical IP due diligence issues, patent portfolio valuation, and licensing agreements and has been instrumental in creative resolutions of potential IP roadblocks in high value transactions. 

Clients rely on Michael’s extensive experience, accumulated over 20 years of legal practice, to navigate the nuances of patent procurement and enforcement in Europe, Asia, Australia, and North and South America.  His skills in mining existing patent assets to enhance their value and in designing and implementing programs for protecting ongoing innovations are highly sought after by cutting edge technology companies.

Experience

  • Michael leads the Mintz team responsible for development and management of the worldwide patent portfolio protecting current and future products of a market leading e-cigarette manufacturer.  He applies innovative asset development strategies to leverage existing disclosures and on-going utility and design filings as part of an integrated, global strategy to interdict copycat products with a view toward market share protection and regulatory compliance.
  • Michael co-manages a sizable portfolio for a market-leading German developer of database and business software products, and collaborates with other Mintz attorneys to develop and apply effective strategies for addressing the ever-changing patentability landscape for software-based inventions.
  • Michael also co-manages the Mintz team that designs and implements a US and foreign patent program for one of the world's largest credit rating agencies, which is also a leader in fraud detection and other financial risk mitigation technology. The Mintz team has tailored the company's portfolio and filing strategies with a particular focus on jurisdiction and subject matter analysis to maximize the value of the company’s legal spend while securing protection in the markets where the company is most likely to achieve grant of valuable, enforceable assets.
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viewpoints

PATENT 101: Key Considerations and Activities for Establishing a Patent Program (Part 2 of 3)

December 1, 2021 | Blog | By Michael Van Loy, Kevin Amendt, Nicholas Eadie

Tasked with starting an innovation protection and patent development program at your company but do not know where to begin? This three part series describes the key components to a patent development program for any company, small or large. This second installment in the series describes subject matter for educating the innovator technical team tasked with developing or evaluating potential patentable innovations within a company.
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PATENT 101: Key Considerations and Activities for Establishing a Patent Program (Part 1 of 3)

July 7, 2021 | Blog | By Michael Van Loy, Kevin Amendt, Nicholas Eadie

Tasked with starting an innovation protection and patent development program at your company but do not know where to begin? This three part series describes the key components to a patent development program for any company, small or large.
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Design Patent Registrations after Brexit and Updates to Design Rights in China

February 25, 2021 | Blog | By Michael Van Loy, Joshua Berk

As we noted in Are Design Patents Missing From Your IP Portfolio, a design patent protects the visual ornamental characteristics of an article and can be an important part of a company’s patent portfolio. Like other patent rights, design patent applications may be filed internationally to expand the number of countries in which a company’s designs are protected.
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Federal Circuit Says Automated Systems Are Not Abstract when Tied to Improvements

February 9, 2021 | Blog | By Michael Van Loy, F. Jason Far-hadian, Mark Hammond

It is now over 10 years since the Bilski decision was handed down by the United States Supreme Court.  In that decision and several other decisions that followed (i.e., Mayo, Myriad, and Alice), the Supreme Court pronounced patent claims directed to abstract ideas not eligible for patent protection.
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Are Design Patents Missing From Your IP Portfolio?

June 23, 2020 | Blog | By Michael Van Loy, Joshua Berk

A design patent protects the visual ornamental characteristics of an article, including consumer and industrial products, medical devices and related tools, sports equipment, jewelry, product packaging, and even web-based and mobile graphical user interfaces and icons.
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Federal Circuit Closes Another AIA Loophole

June 28, 2019 | Blog | By Michael Van Loy

The Federal Circuit recently ruled that state sovereign immunity does not apply in Inter Partes Review (IPR) proceedings, closing another America Invents Act (AIA) loophole.  The case, Regents of the University of Minnesota v. LSI Corporation and Avago Technologies U.S. Inc. (Fed. Circ., 2018-1559), included the review of six Patent Trial and Appeal Board (PTAB) IPRs where the Regents of the University of Minnesota (UMN) filed motions to dismiss based on state sovereign immunity. 
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Federal Circuit Invalidates Claim to Generating “Financial Risk” Reports

March 21, 2017 | Blog | By Michael Van Loy, Nicholas Mouton

In the recent decision of Clarilogic v. Formfree Holdings, the Federal Circuit invalidated the patentee’s (Formfree) claim to a “computer-implemented method for providing certified financial data indicating financial risk about an individual.” 
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Software is Still Patent Eligible

February 16, 2017 | Advisory | By Michael Van Loy, Michael Renaud, Sandra Badin, Matthew Karambelas, Nicholas Mouton

In recent years, software patents have come under fire from legislation (the American Invents Act) that has generally made patents easier to invalidate, and from court decisions (the Supreme Court’s decision in Alice v. CLS Bank1 and its progeny) that have made computer-implemented inventions more vulnerable to subject matter eligibility challenges.
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On November 2, 2016 the United States Patent and Trademark Office (USPTO) issued a memo to Examiners on its stance on subject matter eligibility in response to the McRO and BASCOM Federal Circuit decisions, previously discussed at Global IP Matters.
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Disavowal can occur when a patent holder disavows the full scope of claim terms in the specification or during prosecution (e.g., through the doctrine of prosecution history estoppel). In either event, disavowal requires clear and unequivocal evidence that the claimed invention includes or does not include a particular feature. 
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Events & Speaking

Speaker
Apr
23
2021

Masterclass: Patents 101

FORGE

Virtual Event

Event Reference Image
Speaker
May
14
2018

USPTO Post-Grant Patent Trials 2018: Change & Recalibration

Practising Law Institute

PLI California Center 685 Market Street San Francisco, CA

Panelist
Aug
8
2016

Nuclear Innovation Bootcamp

University of California, Berkeley

Berkeley, California

Speaker
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Recognition & Awards

  • Best Lawyers in America: Patent Law (2021-2023)
  • Included on the San Diego Super Lawyers Rising Star: Intellectual Property list (2016)
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Michael D. Van Loy, PhD

Member

San Diego San Francisco