Peter D. Mlynek

We help to solve clients’ business problems by providing legal and business advice related to intellectual property. Although not limited in industries that we serve, we specializing in working with clients in the chemical, pharmaceutical, or biotechnology business sectors. Our services include • Business Counseling: planning, developing and executing a patenting strategy that is consistent with the clients’ business goals. • US patents: drafting and prosecuting patent applications to clients’ inventions. • International Patents: working through non-US law firms to obtain patents in countries and areas around the globe. • Opinions: preparing freedom to operate opinions, patent invalidity opinions, infringement opinions, and due diligence analysis associated with M&A transactions. • Licensing of intellectual property. • Non-Patent IP Protection: by securing patents, trademarks, copyrights, and trade secrets.

Patents

Patent Appeals, Patent Litigation, Patent Prosecution

Intellectual Property

• Free Consultation

New Jersey

Since 2006

Pennsylvania

Since 2007

USPTO

Since 2001

Rutgers University - Camden

J.D. (2007) | Law

2002 - 2006

Honors: • Dean's List multiple semesters • A/A+/A- grades in Patent Law I, Patent Law II, Patent Prosecution Seminar, Drug & Device Law, Food & Drug Administration Law

Activities: President of the Rutgers Intellectual Property Law Association

University of Wisconsin - Madison

Ph.D. (1996) | Inorganic Chemistry

1987 - 1996

Activities: • Thesis: "Synthesis, Isolation, and Characterization of Variety of High Nuclearity Nickel-Antimony, Nickel-Bismuth, and Nickel Copper Carbonyl Clusters". Such clusters may model catalytic active sites in metal catalyzed reactions. • Major: Inorganic/Organometallic Chemistry • Minor: Analytical Chemistry. Classes in electrochemistry, spectroscopy, laser physics, chromatography. • 5 academic papers. • Synthesized organometallic and metal cluster compounds under anaerobic conditions via Schlenk equipment, drybox, as well as traditional organic synthetic techniques. • Isolated and purified compounds by solvent extraction, liquid chromatography, and crystallization. • Characterized compounds by multinuclear NMR, CV, HPLC, AA, MS, XRF, IR, and X-ray single crystal crystallography. • Developed new synthetic routes to organic ligands that were used as starting materials.

University of Wisconsin - Madison

MBA (1993) | Finance, Investments, and Banking

1987 - 1996

Activities: • 20 Graduate level classes in Business and related fields

University of California - Berkeley

B.S. (1987) | Chemistry

1983 - 1987

Activities: • Course work in all chemistry disciplines, including graduate level classes. • Four semesters of research in bio-inorganic chemistry: synthesized, isolated and characterized non-heme iron dioxygenase model compounds.

Q. can I file a New Use Patent if someone else has rights to the product?

February 1, 2023

A: Yes, this is common. Inventor A gets a patent for an invention, and then inventor B files for an improvement to the invention. Inventor A cannot practice the improved version because inventor B has a patent on it, and Inventor A cannot practice either the original invention nor the improved version of the invention. Typically, what ends up happening is crosslicensing: A licenses his patent to B and B licenses his patent to A.

Q. Intellectual property: I provided a product idea to a company. They stole the idea and used it to secure a patent.

February 1, 2023

A: You may be out of luck. Good companies listen to their customers. Often, a company is told of an idea by its customer, supplier, vendor, employee, etc., and the company develops the idea into an invention, which is then patented. If you pitched your invention to company, then you likely did the presentation under a secrecy agreement. Tlk to your patent counsel. In any case, ideas are not patentable. Good luck!

Q. Are new drumstick holding technique, way to assemble hi hat, and drumming style patentable?

February 1, 2023

A: Yes, I believe that it should be patentable. What I like about our invention as far as patenting it goes, is that it is a combination of three parts: a holding technique, a way to assemble parts of the kit, and a drumming technique. However, be prepared to face two very large hurdles: (A) Firstly, it is very likely that someone has used this type of a set up before. If so, you can't get a patent. It is also possible that nobody has ever done what you have invented, but as done something similar enough that your invention is obvious. Drummers, like all other artists, are creative and try different things easily. They are, well, artistic. There are ways of getting around obvious rejections. (B) Secondly, a patent is a business tool. It is a way of making money. How are you planning on monitizing your invention? Sure, you can give your patent attorney a whole bunch of money, and he'll deliver you a wonderful patent, but so what? What are you going to do with it? How are you going to enforce it? How are you going to license it? This is a business question, and not a legal question. Make sure that it is worth your money to get a patent on your invention.