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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 domestically and internationally with a keen focus on enforceability and business value. He combines a deep and broad technical background with extensive experience developing innovative legal strategies to address patentability challenges involving the mechanical arts, materials science, and computer-implemented technologies (including inhaler technologies, database management, manufacturing techniques, process control, data analytics, etc.), as well as the increasingly commercially important intersection of software and other technical fields such as drug delivery and other medical devices, analytical and sensing systems, transportation, manufacturing, and consumer products.  He also advises on business-critical IP due diligence issues, patent portfolio valuation, and licensing agreements. 

Clients rely on Michael’s extensive experience, accumulated over 18 years of legal practice, to navigate the nuances of patent procurement and enforcement in Europe and Asia in addition to the United States.  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.

Education

  • Santa Clara University (JD)
  • University of California - Berkeley (PhD, Civil & Environmental Engineering)
  • University of California - Berkeley (MS, Civil & Environmental Engineering)
  • University of California - Berkeley (BS, Chemistry)

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.

Recognition & Awards

  • Included on the San Diego Super Lawyers Rising Star: Intellectual Property list (2016)

Viewpoints

IP for Start-Ups: Part I

June 7, 2016 | Blog | By Michael Van Loy

Protecting your ideas is important, especially as you get your business off the ground.  To kick-off the summer, we're launching our IP for Start-Ups series, with IP attorney Mike Van Loy.
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May 2016 101 Guidance from the USPTO

May 24, 2016 | Blog | By Michael Van Loy, Yogesh Patel

There have been some interesting recent developments, both at the Federal Circuit and the USPTO, regarding subject matter eligibility for patenting as it relates to computer-implemented inventions, software, and other technologies that have been heavily impacted over the past two years by the U.S. Supreme Court’s decision in Alice v. CLS Bank.
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UPDATE: Subject Matter Eligibility under 35 U.S.C. § 101 – Abstract Ideas

May 17, 2016 | Alert | By Michael Van Loy, Lily Zhang

All patent applications submitted to the United States Patent And Trademark Office (USPTO) are examined subject to the requirements set forth in 35 U.S.C. §§101, 102, 103, 112, which respectively address patent eligibility, novelty, inventiveness (e.g. non-obviousness), and disclosure and other formal requirements (e.g., enablement, written description, and clarity/definiteness).
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Latest Post-Alice Guidance from the Federal Circuit

May 17, 2016 | Blog | By Michael Van Loy, Howard Wisnia

On Thursday, May 12, 2016, the Federal Circuit reversed a lower court’s finding of invalidity under 35 U.S.C. § 101, as an unpatentable abstract idea, of a software patent concerning a “self-referential” database in Enfish v. Microsoft. In so doing, the Federal Circuit provided some helpful guidance on avoiding Alice rejections for software patents.
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Not Obvious to Combine for a Person of Ordinary Skill in the Art (POSITA)

May 3, 2016 | Blog | By Michael Van Loy, Monique Winters Macek

Summary: Appellant appealed to the Patent Trial and Appeal Board (“Board”) an obviousness rejection to claims directed to a user interface that displays currency trading information.
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Viewpoint Thumbnail

Patents 101: Protecting Innovations

March 23, 2016 | Article | By Michael Van Loy

A deeper dive into the importance and value of patents and the process to get one – from filing through issuance.
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Understanding the Current State of Patent Subject Matter Eligibility Under § 101

November 19, 2015 | Blog | By Christina Sperry, Michael Van Loy

In July the U.S. Patent and Trademark Office issued additional guidelines for determining Subject Matter Eligibility under 35 U.S.C. § 101, as previously discussed at Global IP Matters. 
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Over the past few years, the Supreme Court’s decisions in Alice (Alice Corp. v. CLS Bank Int’l, 134 S.Ct. 2347 (2014)) and Mayo (Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289 (2012)), and other cases relating to subject matter eligibility under 35 U.S.C. § 101 have resulted in significant changes in how the United States Patent and Trademark Office (“USPTO”) examines patent applications.
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Federal Circuit Affirms Dismissal on Grounds of Patent Ineligibility

July 1, 2015 | Blog | By Michael Van Loy, Monique Winters Macek

On June 23, 2015, the Federal Circuit affirmed the finding of the U.S. District Court for the Northern District of California (“District Court”) dismissing the complaints in four related actions for infringement of U.S. Patent No. 7,707,505 (the ‘505 Patent) on the ground of patent ineligibility under 35 U.S.C. §101.
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C.D. Cal. Swims Against the Tide of Software Patent Ineligibility in Caltech v. Hughes

December 31, 2014 | Blog | By Michael Van Loy, Inna Dahlin

Patent applicants from the software and business method fields took notice after the United States Supreme Court issued its opinion in Alice Corporation Pty. Ltd. V. CLS Bank International, et al. (“Alice,” 134 S. Ct. 2347 (2014)) on June 19, 2014, and the U.S. Patent and Trademark Office (“USPTO”) followed with preliminary guidelines (“Guidelines”) issued June 25, 2014 for examining subject matter eligibility under 35 U.S.C. § 101 of claims relating to a judicially created exception to patent eligibility.
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Events

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
Dec
2
2015