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Marc T. Morley


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Marc works with clients to develop and implement effective intellectual property strategies and is recognized as one of San Diego’s top IP attorneys. In addition to obtaining and managing patent portfolios, he handles licensing and other IP-related transactions as well as the requisite due diligence.

Marc provides strategic patent and trademark counseling, manages and prosecutes complex IP portfolios, and advises and counsels diverse clients ranging from early stage to established technology focused companies, research institutions, and venture capital and investment companies. He works with clients across a variety of industries, particularly the pharmaceuticals, biotechnology, medical devices, clean technology, and the mechanical and action sports sectors. His experience encompasses pharmaceuticals, biologics, drug-device combinations, industrial biotechnology, assisted reproductive technology and stem cells, immunology, molecular biology and molecular research tools, chemical engineering, software, mechanical devices, and action sports innovation.

Prior to joining the firm, Marc was a partner in the San Diego office of another large law firm. He also worked for a California-based biopharmaceutical company, where he was involved in the development and optimization of recombinant protein expression systems, protein purification and recovery methods, process scale-up, and process computer automation.

Outside of his legal practice, Marc is active in the legal community having served as the President of the San Diego Intellectual Property Law Association, and as the chair of the IP section of the San Diego County Bar Association. Marc also taught patent law at the University of San Diego School of Law as an adjunct professor and taught patent prosecution and biotechnology patent law at UC San Diego.

Before graduating from law school, Marc was a summer law clerk for the US Senate Judiciary Committee, and worked on legislative projects including the Omnibus Patent Reform Act of 1997, the Digital Millennium Copyright Act, and the Database Piracy Act. In addition, he served as a judicial extern to the Honorable D. Lowell Jensen of the US District Court for the Northern District of California.


The Bayh Dole Act was enacted to provide incentives to promote commercialization of federally funded inventions and was designed to capitalize on the significant government investments in small business, university research, and other non-profit institutions.
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By recognizing a constitutional deficiency in the appointment of Patent Trial and Appeal Board (“PTAB”) judges, the Federal Circuit in Arthrex, Inc. v. Smith & Nephew, Inc., 941 F.3d 1320 (Fed. Cir. 2019) set the stage for numerous appeals by parties unhappy with a PTAB decision and seeking a do-over with a new panel. 
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As noted in our previous post, the U.S. Patent and Trademark Office (USPTO) published a request for comments for a list of questions regarding Artificial Intelligence (AI) Patent Issues in the Federal Register on August 21, 2019. While the comment period has closed, a few developments regarding AI patent issues have occurred that are particularly relevant.
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As 2020 begins and intellectual property (IP) strategies are being developed for the new year, it is a good time to reflect on what IP issues were prominent in 2019.  According to many readers, hot topics included § 112 written description, prosecution history estoppel, and venue in the wake of TC Heartland.
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Artificial Intelligence (AI) is increasingly becoming important across a diverse spectrum of technologies and businesses. As AI grows in importance in business and technology, so too grows the number of patent applications and the potential for uncertainty. Therefore, the U.S. Patent and Trademark Office (USPTO) must continue to ensure the appropriate balance in the administration of our IP system.
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On July 30, 2019, the Federal Circuit held that retroactive application of IPR (inter partes review) proceedings to pre-AIA (America Invents Act) patents is not an unconstitutional taking under the Fifth Amendment (Celgene Corp. v. Peter; appeals from IPR2015-01096, IPR2015-01102, and IPR2015-01103).
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The Federal Circuit in Amgen Inc. v. Coherus Biosciences Inc. affirmed a district court decision that once certain subject matter is clearly and unmistakably surrendered during prosecution, the patentee is barred from asserting an infringement claim under the doctrine of equivalents.  
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Claim construction, the process by which a court interprets the scope and meaning of a patent’s claims, is a crucial part of patent litigation. In fact, claim construction can make or break a patentee’s case for infringement and/or validity.
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Andrei Iancu, the Under Secretary of Commerce for Intellectual Property and Director of the USPTO, believes that the U.S. needs a strong patent system in order to excel and thrive in the global economy.  He has made strengthening the U.S. patent system a core part of his mission responsibilities. Director Iancu has been travelling across the country and speaking with various patent stakeholders. As part of this effort, he met with BIOCOM’s Board of Directors and Intellectual Property Committee in San Diego on April 18, 2019. 
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News & Press

Mintz Member Marc T. Morley was quoted in this article published by The Wall Street Journal in response to questions related to what it means to invent and who has ownership rights to an AI invention.

Marc Morley is a Member in the Mintz San Diego office and an experienced IP attorney. Law360 published an article discussing Marc’s arrival at Mintz. The article highlights the firm’s strong IP bench and leading life sciences practice among the reasons he's excited to join Mintz.
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Mintz continues to expand its national intellectual property practice with the arrival of Marc Morley, who joins as a Member in the San Diego office. His practice includes providing strategic patent and trademark counseling.
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Recognition & Awards

  • IAM Patent 1000: The World’s Leading Patent Professionals (2015 – 2016)

  • The Legal 500: Recognized for Health Care: Life Sciences and for Patent Licensing and Transactional (2014)

  • San Diego Daily Transcript: Top Intellectual Property Attorneys (2012)

  • San Diego Daily Transcript: Top Young Attorneys (2007)

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  • Past President, San Diego Intellectual Property Law Association
  • Past Co-Chair of the Intellectual Property Section, San Diego County Bar Association
  • Adjunct Professor of Patent Law, University of San Diego School of Law (2006 – 2013)
  • Instructor of Biotechnology Patent Law, University of California, San Diego (2008 – 2015)
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