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Lily Zhang


[email protected]



Lily’s practice is dedicated to intellectual property, with an emphasis on patent preparation and prosecution and providing clients with strategic insights in portfolio management. She also provides technical support to the patent litigation team.  She has experience in a broad range of technical areas, including artificial intelligence and machine learning, 3G and 4G wireless technologies, databases, battery composition and production, network hardware and software, cyber security and cryptography, electronic payment systems, bioinformatics, robotics, optics, 3D printing and laser fabrication, and medical devices. 

Prior to joining the firm, Lily worked as a patent attorney at one of the largest business law firms in California, and gained experience in prosecuting US and foreign patent applications. She also worked as a patent attorney at an intellectual property law firm, where she prosecuted patent applications in industries including data storage, accounting and record management, network security, cloud computing, mobile device security, RFID, video processing, NQR/NMR, social networking, online games, consumer finances, electronic marketplaces, power generation and storage, and food production.

Earlier, Lily worked as a financial advisor at a multinational financial services corporation.


Benefits of Using Copyrights to Protect Artificial Intelligence and Machine Learning Inventions

July 11, 2022 | Blog | By Monique Winters Macek, Meena Seralathan, Lily Zhang

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Examining Art Units to Avoid Subject Matter Eligibility Challenges for Bioinformatics and AI-related Patents

November 18, 2021 | Blog | By Terri Shieh-Newton, Lily Zhang, Mark Hammond

Computer-based inventions – especially in the machine learning (ML), bioinformatics, and artificial intelligence (AI) fields – are susceptible to subject matter eligibility challenges. Subject matter eligibility challenges may prevent a patent application from being granted by the United States Patent and Trademark Office (USPTO) and may even be asserted to invalidate a patent post-grant. In recent years, the Federal Circuit has implemented a multi-step test to determine whether patent claims would survive a subject matter eligibility challenge.
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EXCLUSIVE RIGHTS: Intellectual Property — Don’t Get Caught Double Patenting!

October 21, 2021 | Podcast | By Lily Zhang, Alex Trimble, PhD

In this episode of the EXCLUSIVE RIGHTS: Intellectual Property podcast, Mintz patent attorneys Lily Zhang and Alex Trimble, PhD, discuss double patenting, a complicated and sometimes confounding area of patent law.
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AI in Biotech and Synthetic Biology: What Can Be Protected? What Should Be Kept Secret?

August 11, 2021 | Blog | By Joshua Berk, Lily Zhang, Terri Shieh-Newton

Machine learning (ML), bioinformatics, artificial intelligence (AI), and other computational tools have become ubiquitous in the biotech and synthetic biology industries because such technology allows for rapid processing of a large amount of complex data to produce advancements in therapeutics and diagnostics. As the landscape becomes increasingly more competitive, it is important for companies, particularly in the aforementioned industries, to obtain patent protection for their AI-related technology.
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In this episode of the EXCLUSIVE RIGHTS: Intellectual Property podcast, patent attorney Lily Zhang talks with trademark attorney Karen Won about the age-old choice between adopting descriptive brands or distinctive brands for businesses and products.
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Establishing Obviousness: A Fundamental Case of Evidence Over Arguments

March 1, 2018 | Blog | By Brad M Scheller, Lily Zhang

The Federal Circuit affirmed the Patent Trial and Appeal Board’s inter partes review decision declaring various claims of patent owner Thales’ U.S. Patent No. 6,474,159 (“the ‘159 patent”) nonobvious.
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An Ombudsman in Shining Armor: Spotlight on the USPTO Patents Ombudsman Program

November 11, 2016 | Blog | By Christina Sperry, Lily Zhang

The United States Patent and Trademark Office (“USPTO”) introduced the Ombudsman Program on April 6, 2010 with the ostensible goal of advancing patent applications that have stalled during the examination process.
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The Specter of Alice Looms Large Even in PGRs

August 15, 2016 | Blog | By Brad M Scheller, Lily Zhang

On August 3, 2016, the Patent Trial and Appeal Board issued a post-grant review decision that bears one striking similarity to its previous post-grant review decisions, namely invalidation of claims under Alice Corp. Pty. v. CLS Bank Int’l, further bolstering the salience of patent ineligibility challenges in post-grant proceedings.
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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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Recognition & Awards

  • Best Lawyers of America: Ones to Watch – Patent Law (2023)
  • Named a "Women of Influence in Technology 2021" honoree by the San Diego Business Journal (2021)
  • Identified in Best Lawyers in America as among the "Ones to Watch": Patent Law (2021)
  • Selected as San Diego Business Journal’s Next Top 40 Business Leaders Under 40 (2020)
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Lily Zhang


San Diego