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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 in the San Diego office of a large law firm specializing in IP and technology law. 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

Viewpoint

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.
Viewpoint General
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.
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.