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Frank L. Gerratana

Member

[email protected]

+1.617.348.4878

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Frank partners with innovators to develop and execute smart patent strategies that help them compete in global markets. His clients include growing, dynamic companies pioneering next-generation electrical and computer technologies including cryptocurrency and blockchain systems, artificial intelligence, machine learning, cloud computing, autonomous vehicles, and medical devices.

Recognized as one of the World’s Leading IP Strategists by Intellectual Asset Management magazine, Frank often works hand in hand with clients to build their companies’ portfolios from the ground up. Although his clients include companies of all sizes, his practice focuses in particular on start-ups and mid-market companies whose patent portfolio is core to the value of their business. Frank’s keen technical skills allow him to collaborate closely with clients to identify the best opportunities for protecting their technology using a patent strategy carefully tailored to their goals. He has handled portfolios ranging from several to hundreds of patents and brings an exceptional understanding of the complexities of global patentability — including jurisdictional differences in patent law — to his work managing international filings and coordinating claim development to ensure global enforceability.

Prior to joining Mintz, Frank was a partner with a global intellectual property firm in Boston. Earlier he started his own web hosting company, DGN Enterprises, and worked in software engineering at a Boston-area start-up.

In addition, Frank has an active pro bono practice, and has worked extensively with the American Civil Liberties Union of Massachusetts and many other nonprofit organizations.

viewpoints

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Blockchain is becoming central to more FinTech patent portfolios than ever – but it’s harder to obtain protection on blockchain than most other technologies. The US Supreme Court’s decision in Alice v. CLS Bank (2014) strengthened limits on what subject matter is eligible for patent protection under 35. U.S.C. §101. 

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The United States Patent and Trademark Office (USPTO) has issued a pivotal guidance document, effective April 11, on the use of Artificial Intelligence (AI) tools within patent and trademark practices.

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The emergence of artificial intelligence (AI) as a field of technology has correlated with an increase in patent application filings on AI-related inventions over the past two decades. With more filings than ever, businesses and institutions developing AI-based technology are claiming rights over key innovations in this space.

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As metaverse-related technology and branding initiatives continue to grow, innovators in the space may need to pursue IP protection. Mintz Member Frank Gerratana and Associate Amritaa Ganguly discuss the use of patents, trademarks, and copyrights to protect innovations and creative activity associated with this new virtual world.

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In this latest episode of EXCLUSIVE RIGHTS, Members Daniel Weinger and Frank Gerratana, along with Associate Greg Penoyer, explore how high-tech start-ups can set themselves up for IP success. The podcast covers the dos and don’ts related to founding documents, provisional patent applications and strategy, trademarks, open source considerations, and more.

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Starting a high-tech company is a difficult, exhausting, and thrilling endeavor – one in which founders will face seemingly endless challenges, deadlines, and make or break decisions. From a venture’s inception, founders face numerous decisions that if not thoughtfully considered can result in significant legal and financial risk.

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Artificial Intelligence (AI) is now at our fingertips.  No longer a concept hidden behind the walls of Big Tech and academia, AI programs are now available and accessible to everyone.  Generative AI tools like ChatGPT have made headlines for its human-like conversation and writing, and Lensa has done the same for its ability to create original works of art. 

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Non-fungible tokens (“NFTs”) grabbed mainstream attention in 2021 with news of digital art and collectibles selling for millions. But headlines reporting NFTs selling for millions were short-lived. “Crypto winter” cast a chill across the crypto world – prices and interest in the digital art and images that became synonymous with NFTs plummeted.

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The NFT space is now accustomed to novel use cases and new project launches on a near daily basis. From NFTs involving real estate, to property in the metaverse, to NFT funds, innovation is the name of the game. But until a few days ago, we had not seen a corporate-style acquisition in the NFT space. This news is another reminder that technological innovation continues to outpace regulatory guidance. 

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News & Press

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BOSTON – Nine Intellectual Property attorneys from Mintz have been recognized in the 2024 edition of the Intellectual Asset Management (IAM) Strategy 300 Global Leaders Guide.

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Mintz is pleased to announce that Member and Chair of the firm’s Intellectual Property Division Michael Renaud and Members Matthew GalicaFrank GerratanaMarguerite McConiheMichael NewmanAdam RizkAdam SamanskyDaniel Weinger, and James Wodarski have been named to the 2023 IAM Strategy 300: The World’s Leading IP Strategists list.

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Mintz is pleased to announce that 120 firm attorneys have been recognized as leaders by Best Lawyers® in the 2024 edition of The Best Lawyers in America©.

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Member Frank Gerratana spoke to Insider about the growing use of AI technology and how this will impact copyright laws.

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BOSTON-  Six attorneys from Mintz have been recognized in the 2023 edition of the Intellectual Asset Management (IAM) Strategy 300 Global Leaders Guide.

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Mintz is pleased to announce that Intellectual Asset Management (IAM) named Michael Renaud, James Wodarski and Frank Gerratana to its 2022 edition of the IAM Strategy 300 Global Leaders Guide, a supplement to the IAM Strategy 300: The World’s Leading IP Strategists. According to IAM, the guide “draws from the worlds of private practice, consulting, and other service providers, with specialists from the major IP markets in North America, Europe and Asia. Together they possess a wealth of expertise across disciplines and sectors.”
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Mintz Member Frank Gerratana was quoted in The New York Times DealBook newsletter regarding a lawsuit filed by studio Miramax against Quentin Tarantino claiming breach of contract and various intellectual property violations in Tarantino’s auctions of nonfungible tokens, or NFTs, associated with his original handwritten screenplay for “Pulp Fiction”.
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Mintz Member Frank Gerratana was quoted in a special edition of The New York Times DealBook newsletter explaining "Web3," which crypto enthusiasts see as the future of an internet run on blockchain-based tokens. In the article, Mr. Gerratana addressed intellectual property considerations associated with non-fungible tokens, or NFTs, and shared how some of his clients are preparing to adopt this technology.
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Publications

Recognition & Awards

  • IAM Strategy 300 – The World's Leading IP Strategists (2021 - 2023) 

  • IAM Strategy 300: Global Leaders – All Individuals (2022 - 2024)

  • Best LawyersOnes to Watch - Intellectual Property Law (2024); Patent Law (2024)

  • Massachusetts Lawyers Weekly “Up & Coming Lawyer” (2016)

  • Massachusetts Super Lawyers  Rising Stars list (2015)

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Involvement

  • Chair, AIPLA Law Practice Management Committee (2018 – 2019)
  • Vice Chair, AIPLA Law Practice Management Committee (2016 – 2018)
  • Chair, AIPLA New Lawyers Committee (2014 – 2016)
  • Vice Chair, AIPLA New Lawyers Committee (2013 – 2014)
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