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Peter D. Mlynek

Peter D. Mlynek

Patent Law for Chemical, Pharmaceutical, and Biotech Industries
  • Patents, Intellectual Property
  • New Jersey, Pennsylvania, USPTO
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Summary

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.

Practice Areas
  • Patents
  • Intellectual Property
Fees
  • Free Consultation
Jurisdictions Admitted to Practice
New Jersey
Pennsylvania
USPTO
Education
Rutgers University - Camden
J.D. (2007) | Law
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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
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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
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Activities: • 20 Graduate level classes in Business and related fields
University of California - Berkeley
B.S. (1987) | Chemistry
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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.
Websites & Blogs
Website
Legal Answers
411 Questions Answered

Q. Inheritance and patent questions
A: A patent that is issued is a legally a personal property, so that it can be inherited just like money, a car, or an art collection. If your great-grandfather owned patents, then it would have passed onto the appropriate heir (either by will or intestate). The problem with inheriting patents is that they expire. If your great-grandfather filed for a patent more than 20 years ago, then there is nothing to inherit.
Q. My wifes dad is Vincent Dotolo is she entitled to these patents?
A: I presume that your FIL passed away, and you are asking if your wife, the next of kin, gets to inherit his patents. Generally, patents are legally considered personal property, and thus the heirs can inherit patents just like a car, or an art collection. Unfortunately, in your wife's case, all 9 patents are too old, and have expired many years ago. There is nothing for your wife to inherit. Sorry. (By the way, his name sounded familiar, so checked my hard drive, and I happened to run across one of his patents 3 years ago. It is a small world.)
Q. Hi, Can the inventor of a utility patent claim ownership of a patent if it was never assign to the applicant company?
A: I am sorry, John, but it is very unlikely that you have any ownership stake in Patent #Y. If patent #Y has issued, and it is pretty much the same as patent application publication #X, then Patent Application Y somehow claimed priority to X. It had to, because X would otherwise be cited against Y, and no patent on Y would be issued. If you assigned your patent application for your invention to the company, then you almost certainly assigned all rights to it, including rights to divisional, continuations, etc. And even if you wouldn't have assigned the rights, they would have very likely gotten rights to it because you were their employee. The only way to get the ownership of the patent is for you to buy it off them.
Q. P#8428453 Most of the claims reflect that of a basic camera app. If I created a picture taking app could Snapchat sue me
A: Sorry, but you are going to have to hire a patent attorney who specializes in computer science to really be able to answer this question.
Q. Is it possible to patent a voyage?
A: If it is just a map or an app or a brochure that shows the route that a ship could take, then likely you won't be able to get a patent on it. You may be able to protect it by copyright, though. If you are talking about operating a business that actually does this type of a cruise, then yes, you may be able to get a patent on this business model. Unfortunately, it may not be easy to get the patent, because there are so many different thematic cruises already.
Q. Can I take a patented product add additional functionality and then package as a new product?
A: Generally, you cannot avoid infringement by adding features to a patented product. But it really depends on what the patent claims say. You need to hire a patent attorney to be able to determine what to do. Relying on advice from strangers on the internet makes little sense.
Q. Patent inventor has passed away/ are royalties due his heirs from companies using the patents?
A: Theoretically yes, but in practice this is rare. A patent is considered as personal property, just like a car, a stock portfolio, or an old masters painting. So, yes, you can inherit a patent just like any other personal property. In order to collect license fees, or "royalties", based on the decedent's patent, several things need to occur. Firstly, the decedent had to own the patent. What is important is not that he is the inventor, but that he is the assignee. If the inventor was employed as a scientist or an engineer, it is almost certain that the employer owned the patent, and not the decedent. Secondly, there must be some sort of a license agreement between the companies using the patent, and the decedent. It is not like a company who wants to make the same product as claimed in the patent is going to just send a check every month to the owner of the patent. There must be an agreement. Thirdly, the patent must be enforceable and valid. This means, for example, that it has not been found invalid in court. The most common reason for not being enforceable is because the patent expired. Patents pass into public domain 20 years after the filing of the application, so if the patent is from the 1980's or 1990's, for example, then the patent expired. Another common reason for a patent not being enforceable is because the maintenance fees have not been paid, and the patent lapsed.
Q. Why is it that in patent drawings, I do not see the invention depicted as it is being used very often?
A: The reason why we have drawings in a patent is to communicate to the reader what the invention is all about. The drawings are there to support the claims. Whatever you claim, make sure that it is fully supported in the description and drawings. I think that you are correct that many times the drawings do not show how the article or device (or tool, in your case) are used. I think that this is a mistake, and I believe that if drawings that clarify the use of the tool should be included. You should put it in. But there is a reason why the drawing of the use of the tool is frequently omitted. The reason is that a patent that claims the tool is much more valuable than a patent to the method of using the tool. It has to do with enforcement: if the patent owner sees someone else selling the tool, it is easy to go after the seller or maker of the infringing tool. But if the patent claims the method, then the patent owner has to find a person who is using the tool in the same way as is claimed in the patent, sue the user, and sue the seller and maker of the tool as contributory infringers. Patents claiming the method of use are thus more difficult to enforce compared to the patent claiming the tool itself.
Q. Am I able to manufacture an item similar to this patented design without repercussions?
A: If you are infringing, then no. To get a proper answer, you need to hire a patent attorney.
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Law Offices of Peter D. Mlynek
516 Eaglebrook Dr.
Moorestown, NJ 08057
USA
Telephone: (856) 787-0880