Peter D. Mlynek

We help to solve clients’ business problems by providing legal and business advice related to intellectual property. Although not limited in industries that we serve, we specializing in working with clients in the chemical, pharmaceutical, or biotechnology business sectors. Our services include • Business Counseling: planning, developing and executing a patenting strategy that is consistent with the clients’ business goals. • US patents: drafting and prosecuting patent applications to clients’ inventions. • International Patents: working through non-US law firms to obtain patents in countries and areas around the globe. • Opinions: preparing freedom to operate opinions, patent invalidity opinions, infringement opinions, and due diligence analysis associated with M&A transactions. • Licensing of intellectual property. • Non-Patent IP Protection: by securing patents, trademarks, copyrights, and trade secrets.

Rutgers University - Camden

J.D. (2007) | Law

2002 - 2006

Honors: • Dean's List multiple semesters • A/A+/A- grades in Patent Law I, Patent Law II, Patent Prosecution Seminar, Drug & Device Law, Food & Drug Administration Law

Activities: President of the Rutgers Intellectual Property Law Association

University of Wisconsin - Madison

Ph.D. (1996) | Inorganic Chemistry

1987 - 1996

Activities: • Thesis: "Synthesis, Isolation, and Characterization of Variety of High Nuclearity Nickel-Antimony, Nickel-Bismuth, and Nickel Copper Carbonyl Clusters". Such clusters may model catalytic active sites in metal catalyzed reactions. • Major: Inorganic/Organometallic Chemistry • Minor: Analytical Chemistry. Classes in electrochemistry, spectroscopy, laser physics, chromatography. • 5 academic papers. • Synthesized organometallic and metal cluster compounds under anaerobic conditions via Schlenk equipment, drybox, as well as traditional organic synthetic techniques. • Isolated and purified compounds by solvent extraction, liquid chromatography, and crystallization. • Characterized compounds by multinuclear NMR, CV, HPLC, AA, MS, XRF, IR, and X-ray single crystal crystallography. • Developed new synthetic routes to organic ligands that were used as starting materials.

University of Wisconsin - Madison

MBA (1993) | Finance, Investments, and Banking

1987 - 1996

Activities: • 20 Graduate level classes in Business and related fields

University of California - Berkeley

B.S. (1987) | Chemistry

1983 - 1987

Activities: • Course work in all chemistry disciplines, including graduate level classes. • Four semesters of research in bio-inorganic chemistry: synthesized, isolated and characterized non-heme iron dioxygenase model compounds.

New Jersey

Since 2006

Pennsylvania

Since 2007

USPTO

Since 2001

• Free Consultation

Patents

Patent Appeals, Patent Litigation, Patent Prosecution

Intellectual Property

Q. I want to create and patent a license plate trim. How do I do that?

15 February 2021

A: You need to contact a patent attorney to get this done. You most likely have two options depending what aspect of the license plate trim you are trying to protect. If you are trying to get coverage for the ornamental design of the trim, then you'll likely need a design patent. If you are trying to protect the functionality of the trim, then you'll need a utility patent.

Q. I have a pillow Design that describes similar to the "neck pillow "but my description and purpose are slightly different

15 February 2021

A: Whether you infringe and whether you need a patent are two different subjects. With regards to infringing of a patent of another product you need to see a patent attorney, who will provide you with a non-infringement opinion. The patent attorney will take a look at your product and at the claims of the patent, and will tell you that you do not infringe the patent. With regards to filing your own patent, if your product is new and is not obvious, then you should be able to get a patent for it.

Q. What is the lashify patent? Trying to start a lash business but want to adhere to their patent.

11 February 2021

A: Congratulations on starting a new business! As you know, there are many legal hurdles that you need to deal with, including registering the business name, incorporation, zoning, health, hours of operations, employment, taxes, etc. You are to be commended that you are concerned about patents early on; this is something that most business owners do not worry about until they are hit with a cease and desist letter. The good news is that if you are going to be buying Lashify's products for use in your business, then you won’t be sued by Lashify. The whole point of Lashify having patents on their products is so that their competitors do not make and sell the same products. Your business is not Lashify's competitor, but their customer. They do not want to sue their own customer. A few caveats: (1) Lashify, Inc. has about 11 US patents, both utility patents, and design patents. There are more patents pending, and the company also has rights to other patents since they post on their website that they have "70 patents". Some of these patents are on artificial eyelashes, some are on applicators, and some are on storage cases. I have not reviewed all of them, but it appears that the patents are to the products that the company sells or may sell and not to a business of lashing. If they have a patent on a lashing business or a method of lashing that I have not seen, and are operating (or franchising) a chain of lash bars or lash salons and thus will be your competitors, then you do need to worry about such patents. (2) Although you've named only Lashify in your question, please be aware that there are other companies whose patents you may need to worry about. (3) If you buy off-brand supplies from someone who is copying Lashify's (or other vendor's) products that are patented, then you do need to worry about their patents. A vendor does not want to sue the lash business which is a customer of its competitors, because the vendor wants to convert the lash business to its own customers, but depending on how the patent is written, the vendor may need to bring a suit which names the lash business as one of the co-defendants. The vendor may need to include the lash business in the suit, even though the real target is its competitor. It is a danger that you need to be aware of. To address this, you may want to deal with this potential danger contractually by adding the appropriate indemnity clauses to any supply contracts that you'd sign. Most of my clients are in the personal care product space, so I'd be happy to help you with any patent or trademark questions that you may have. Good luck!