Photo of Michael Van Loy

Michael Van Loy is a Member based in the firm’s San Diego office. He focuses on IP portfolio strategy development. He has prosecuted patents in a diverse range of technical fields, including motor vehicle engines and braking systems, chemical and environmental sensing and analysis, alternative energy sources and storage, emissions controls and remediation, semiconductor design and production, wired and wireless telecommunications, e-commerce, satellite-guided navigation, software and database development and management, medical devices, pharmaceutical formulation and targeted delivery mechanisms, video compression, and optical coatings.

FinancialReviewIn 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.”  In sum, Claim 1 of Formfree’s patent recited (1) “electronically collecting financial account data” (e.g., historical transaction data) for an individual, (2) validating the data by “applying an algorithm engine” to identify exceptions that “indicate incorrect data or financial risk,” (3) confirming the exceptions by “collecting additional data and applying the algorithm engine to the additional data,” and (4) “generating, using a computer, a report from the financial account data and the valid exceptions.”

Continue Reading Federal Circuit Invalidates Claim to Generating “Financial Risk” Reports

keyboard_566705419In 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 Bank and its progeny) that have made computer-implemented inventions more vulnerable to subject matter eligibility challenges. Some observers have concluded that software patents are no longer worth pursuing. We disagree. Although there are real challenges, and patents on some software or other computer-implemented inventions may now be quite difficult (or even impossible) to obtain or enforce, a well-written and well-prosecuted patent application can circumvent many of these obstacles.

To read our full advisory on software patent eligibility, please click here.

Subject Matter EligibilityOn 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 here and here. The USPTO will be updating its subject matter eligibility guidance in view of these decisions and also the Amdocs decision, which issued the day before the USPTO published its memo and thus is not addressed therein.      Continue Reading The USPTO’s Latest Memo on Subject Matter Eligibility Provides Hope For Modern Innovators

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.  However, “clear and unequivocal” does not mean “explicit.”  Last week, in the case of Poly-America, L.P. v. API Industries, Inc., the Federal Circuit explained that “an inventor may disavow claims lacking a particular feature when the specification describes ‘the present invention’ as having that feature.”  Similarly, the court explained that “an inventor may disavow claims lacking a particular feature when the specification distinguishes or disparages prior art based on the absence of that feature.”

Continue Reading Another Friendly Reminder from the CAFC – Use of “the Present Invention” is Clear and Unequivocal Evidence of Disavowal

In our sixth “IP for Start-Ups” video, “Getting the Correct Named Inventors on a Patent”, Mike discusses the importance of including all of the inventors on a patent and why it’s important to name anyone who has a reasonable proximity to the invention.

Click here for the full “IP for Start-Ups” video playlist.

Tune into Global IP Matters every Tuesday at 11:00 AM for a new video in the “IP for Start-Ups” series, where Mike will address different aspects of patent strategy specifically for start-up companies. Looking for more start-up information? Check out MintzEdge, a resource for entrepreneurs with insights and tools for starting or growing your enterprise.

In our fifth “IP for Start-Ups” video, “Copyrights versus Patents to Protect Software Innovations”, Mike discusses the pros and cons of using copyrights or patents to protect your software. There are advantages and challenges inherent in either approach, and Mike provides insights into each. He gives particular attention to the Alice Corp v CLS Bank Int’l decision at the US Supreme Court which made it much harder to patent software.

Click here for the full “IP for Start-Ups” video playlist.

Tune into Global IP Matters every Tuesday at 11:00 AM for a new video in the “IP for Start-Ups” series, where Mike will address different aspects of patent strategy specifically for start-up companies. Looking for more start-up information? Check out MintzEdge, a resource for entrepreneurs with insights and tools for starting or growing your enterprise.

In our fourth “IP for Start-Ups” video, “Are U.S. Patents Good Outside of the USA?”, Mike discusses how geography plays into patent protection, both inside the U.S. and internationally.  Click here for the full “IP for Start-Ups” video playlist.

Tune into Global IP Matters every Tuesday at 11:00 AM for a new video in the “IP for Start-Ups” series, where Mike will address different aspects of patent strategy specifically for start-up companies. Looking for more start-up information? Check out MintzEdge, a resource for entrepreneurs with insights and tools for starting or growing your enterprise.

As our weekly “IP for Start-Ups” series continues, IP attorney Mike Van Loy discusses the nuances behind writing claims that are both broad enough to capture potential infringers and specific enough to show that the patent is not covered by prior art, in our third video, “The Importance of Getting the Claims Right in a Patent”.   Missed the first two videos in the series?  Click here for the full video playlist.

Tune into Global IP Matters every Tuesday at 11:00 AM for a new video in the “IP for Start-Ups” series, where Mike will address different aspects of patent strategy specifically for start-up companies. Looking for more start-up information? Check out MintzEdge, a resource for entrepreneurs with insights and tools for starting or growing your enterprise.

Check out the second video in our “IP for Start-Ups” series, “The Folly of the ‘One Killer Patent’ Strategy”, below.  Mike talks about the strategic advantage of having a modest patent portfolio, rather than only a single patent. For the rest of the videos in the series, please click here.

Tune into Global IP Matters every Tuesday at 11:00 AM for a new video in the “IP for Start-Ups” series, where Mike will address different aspects of patent strategy specifically for start-up companies.  Looking for more start-up information? Check out MintzEdge, a resource for entrepreneurs with insights and tools for starting or growing your enterprise.

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.  Tune into Global IP Matters every Tuesday at 11:00 AM for a new video in the series, where Mike will address different aspects of patent strategy for start-up companies.

Check out the first video in the series, “The Strategy of Circling Around a Patent with Improvements,” below, where Mike discusses patenting improvements on existing patents.

Looking for more start-up information?  Check out MintzEdge, a resource for entrepreneurs with insights and tools for starting or growing your enterprise.