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Monique Winters Macek

Associate

[email protected]

+1.858.314.1542

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Monique focuses her practice on patent prosecution and strategic portfolio counseling.  In addition to drafting and prosecuting patent applications, Monique produces infringement and validity opinions, conducts freedom-to-operate analyses, and works with clients to develop and implement offensive and defensive strategies to secure and maintain market share. She assesses competitor product lines and patent filings and helps clients determine opportunities for innovation in their own product lines, including design-around recommendations based on competitor patents.

Her clients range from startups to large, publicly traded companies in the medical device, biotech, and action sports industries. Monique works closely with clients of all sizes to gain a deep understanding of their businesses and products. She enjoys visiting client sites to see products first-hand and to meet with engineers and the business and legal teams.

Her bio-mechanical education and engineering experience allow her to understand clients’ complex mechanical and medical devices and craft formidable patents protecting their innovations.  

Prior to joining Mintz, Monique served as a patent agent in-house at Tandem Diabetes Care, Inc. and NuVasive, Inc.  In these roles, she worked with inventors and management to participate in all aspects of intellectual property matters, including application drafting, evaluating concepts for potential patentability, and patent strategy development and analysis. She has also worked as a bio-mechanical engineer for Flex Partners, Inc.  Her engineering work revolved around medical devices such as cardiac ablation catheters, eye sensor technology, insulin pumps, and orthopedic surgical tools and implants.

Education

  • University of San Diego School of Law (JD)
  • San Diego State University (BS, Biology and Mechanical Engineering)

Recognition & Awards

  • Member, American Intellectual Property Law Association (AIPLA)

Viewpoints

When trying to overcome an obviousness rejection of a patent claim, an argument that two or more cited references cannot be combined may be used.  For example, it can be argued that the combination is improper because the modification of a reference completely changes its “fundamental principle of operation.”
On April 7, 2017, the U.S. Patent and Trademark Office (USPTO) announced it has launched an initiative to develop ways to improve Patent Trial and Appeal Board (PTAB) proceedings, particularly inter partes review proceedings. 
On January 16, 2017, the European Unified Patent Court (UPC) announced that a Preparatory Committee is currently working under an assumption that the Provisional Application Phase (PAP) of the UPC will presumably begin in May 2017, and the UPC can become operational in December 2017.
The Patent Trial and Appeal Board (PTAB) recently designated Ex parte Schulhauser, Appeal 2013-007847 (PTAB April 28, 2016), as precedential.  In this decision the Board clarified how to interpret method and system claims that include conditional language.
An invention cannot be patented if it was ready for patenting and was subject to a commercial offer for sale more than one year before the application was filed.
Summary: Appellant appealed to the Patent Trial and Appeal Board (“Board”) an obviousness rejection to claims directed to a user interface that displays currency trading information.
On June 23, 2015, the Federal Circuit affirmed the finding of the U.S. District Court for the Northern District of California (“District Court”) dismissing the complaints in four related actions for infringement of U.S. Patent No. 7,707,505 (the ‘505 Patent) on the ground of patent ineligibility under 35 U.S.C. §101.