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Paul S. Brockland

Associate

[email protected]

+1.858.314.1524

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Paul is a certified patent attorney who focuses on a broad range of intellectual property matters. His experience includes preparing and prosecuting US and international patent applications; participating in post-grant proceedings, including drafting multiple successful petitions for inter partes review; conducting and defending IP due diligence during mergers and acquisitions; and counseling clients on the patentability of their designs and the scope of IP protection available to them under the law. His clients have included electronic hardware and software companies, wireless communications and wireless power providers, and medical device companies.

Prior to joining Mintz, Paul was an associate at the San Diego office of a large law firm specializing in IP and technology law. His practice included a variety of technical areas, including artificial intelligence and machine learning, 802.11, 3G, and 4G wireless technologies, electromagnetic shielding, video imaging and processing, MEMS, network hardware and software. Paul also has considerable experience in diverse areas including a variety of ophthalmic devices, treatments and implants, orthopedic surgical tools, signal processing and related software applications and user interfaces. Earlier he was a corporate and securities associate at another large multinational law firm, where his experience included serving a six-month secondment with a publicly traded medical device company and receiving the law firm’s national pro bono award.

During law school, Paul worked as a judicial extern for the Honorable Marilyn J. Huff of the United States District Court for the Southern District of California.

An avid traveler, Paul is the founder of www.midcareerbreak.com, a travel blog offering insights on unsung destinations and experiences, culinary adventures, and volunteer opportunities.

Education

  • University of San Diego (JD, cum laude)
  • Northwestern University (BS, Electrical Engineering)

Involvement

  • Volunteer, Jesuit Alumni Service Corps (July 2003 – June 2004)

Languages

- Spanish

Viewpoints

Patent Prosecution and Strategic Counseling Viewpoint Thumbnail

USPTO Weighs in on IT Modernization in CXOTalk Interview

August 31, 2020 | Blog | By Christina Sperry, Paul Brockland

How does an important U.S. government agency modernize its operations, especially during a global health crisis? What IT modernization approach can U.S. patent and trademark practitioners expect from the United States Patent and Trademark Office (USPTO)?
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Trademark Copyright Viewpoints Thumbnail
In a recent decision from the Second Circuit, Judges Parker, Chin, and Carney side-stepped a novel question: whether human skin can be the kind of "tangible medium of expression" required for copyright protection. Instead, the court held that a photograph of a makeup artist’s application of a makeup design to a human “fixed” the design for purposes of copyright law and affirmed the district court’s dismissal of the appellant Mourabit’s unjust enrichment and unfair competition/misappropriation claims as preempted by the Copyright Act.
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Intellectual Property Viewpoints Thumbnail

Update on Federal Register Notice on Artificial Intelligence (AI) Patent Issues

January 21, 2020 | Blog | By Michael Renaud, Marc Morley, Paul Brockland

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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Viewpoint-Landing Intellectual Property Mintz

Year in Review: The Most Popular IP Posts of 2019

January 6, 2020 | Blog | By Christina Sperry

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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Recap of Federal Register Notice on Artificial Intelligence (AI) Patent Issues

September 17, 2019 | Blog | By Marc Morley, Michael Renaud, Paul Brockland

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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Patent practitioners, inventors, in-house counsel, and patent examiners alike have been clamoring for more guidance on computer-implemented functional claim limitations invoking § 112(f) since the Federal Circuit’s en banc Williamson v. Citrix decision in 2015. To help answer some of those pleas, the U.S. Patent and Trademark Office (USPTO) published a Federal Register notice on January 7, 2019 to address issues under 35 USC § 112.
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On July 20, 2017, the United States Court of Appeals for the Federal Circuit in In re OptumInsight denied OptumInsight’s petition for writ of mandamus on privilege waiver.
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