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Mark D. Hammond


[email protected]



Mark is a patent attorney with a background in engineering.  He focuses on preparing exceptional patent applications for emerging technologies in the medical device, aerospace, semiconductors, machine learning, power generation, and electronics industries.  Mark minds the nuances of emerging case law surrounding patentable subject matter, which pays significant dividends when prosecuting software applications on appeal before the USPTO. He recognizes that negotiating a win at the USPTO is just as much an art as a science. This means not only sharp legal arguments on paper, but also speaking directly with high-ranking USPTO personnel to get sensitive matters in front of the right set of eyes. Mark’s patent prosecution knowledge extends beyond the U.S. market to European and Asian markets as he facilitates a large client’s worldwide IP rollout strategy.

Mark works on patent litigation support matters, which has the added benefit of sharpening his prosecution practice. Most recently, Mark dove into the details of patent invalidation and patent infringement for products in the personal transportation and electronic toy industries. This litigation experience enables Mark to complete the prosecution feedback loop by baking language into patent applications that enhances validity and enforcement.

Prior to joining Mintz, Mark worked as an associate in the San Diego office of a Seattle-based international law firm. He also worked as a summer associate with intellectual property law firms in Houston and Salt Lake City and served as a summer intern in the Madrid office of a global law firm.

In the San Diego community, Mark has assisted underprivileged inventors and entrepreneurs in protecting their inventions. He also assists underprivileged persons who seek guardianship of minors whose parents are otherwise unable to care for.

Before attending law school, Mark worked as an engineer on various DRAM products with a computer memory and computer data storage manufacturer.

As an undergraduate, Mark interned at a company that provides systems engineering services for aerospace vehicles. Through a cooperative education program, he also worked as an RF test engineer and a reliability engineer for a company that manufactures secure networked communication solutions. At the University of Utah, Mark served in an Undergraduate Research Opportunities Program assistantship and received a Merrill Engineering Scholars Fellowship.


The Federal Circuit recently provided strategic guidance for defending software claims against Alice challenges that claims recite ineligible patent subject matter under 35 U.S.C. § 101. In Mentone Solutions LLC v. Digi International Inc., defendants alleged that representative claim 5 of U.S. Patent No. 6,952,413, directed towards allocating data channels using shifted uplink status flags in cellular mobile stations, claimed only an abstract idea. The District Court agreed and dismissed. On appeal, the Federal Circuit reversed, holding that claim 5 is not directed to an abstract idea because the claim improved the functionality of a computer.
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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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The Federal Circuit in Apple Inc. v. Qualcomm Incorporated handed down a decision on April 7, 2021 that provides guidance on the determination of standing for patent licensees who wish to contest the validity of a patent or patents in a licensed portfolio.
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It is now over 10 years since the Bilski decision was handed down by the United States Supreme Court.  In that decision and several other decisions that followed (i.e., Mayo, Myriad, and Alice), the Supreme Court pronounced patent claims directed to abstract ideas not eligible for patent protection.
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As 2021 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 2020.  According to many readers, hot topics included Chinese foreign filing licenses, patenting involving either artificial intelligence (AI) or COVID-19, inter partes review, and attorney fee awards.
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Increased employee mobility, health challenges, and the economic downturn due to the COVID-19 pandemic may result in more inventors than usual being unavailable to assign patent rights.  Fortunately, applicants may procure a U.S. patent even if an assignment document cannot be obtained for the application to be filed.  
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Increased employee mobility, health challenges, and the economic downturn due to the COVID-19 pandemic may result in more inventors than usual being unavailable to sign declarations for patent applications as required by the U.S. Patent and Trademark Office (USPTO) for all applications. 
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As more U.S. businesses employ inventors abroad, the need for foreign filing licenses increases, especially if patent rights are first sought domestically.  Obtaining foreign filing licenses may present financial and linguistic obstacles, potentially jeopardizing the priority date of your application or patent rights within the foreign country. 
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