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

Q. Can Xlear's active patents prevent me from making a generic nasal spray with xylitol and iodine?

March 12, 2025

A: If you want to make a generic nasal spray that contains a mixture of xylitol and iodine, then it looks like you are fine.

With regards to US 8,709,508, all of the claims require the claimed composition to contain two ingredients:

(a) xylitol or xylose, and

(b) any of the following: cromolyn sodium, phenylephrine hydrochloride, oxymetazoline hydrochloride, azelastine hydrochloride, and mometasone furoate.

As long as you do not use any of the ingredients in (b), you’ll likely be fine.

Iodine is not required as an ingredient, and it is not even discussed in the patent.

Regarding US 9,011,941, all of the claims require the claimed composition to contain two ingredients:

(a) xylitol or one of the other listed sugars; and

(b) any of the following: cromolyn sodium, phenylephrine hydrochloride, oxymetazoline hydrochloride, azelastine hydrochloride, and mometasone furoate.

Again, as long as you do not use any of the ingredients in (b), you’ll likely be fine.

Again, iodine is not disclosed in the patent.

No, you cannot include one of the ingredients in (b), and try to get around the patent by just adding iodine.

Obviously, the above is just a 5 minute review of just the two patents (I did not consider any other ones) and you should hire a patent lawyer to make sure, but from initial review it looks pretty good for you.

Good luck to you! ... Read More

Q. We manufacture a towel for one of our customer in US and after manufacturing we both found out that it is patented.

February 15, 2025

A: I am so sorry that this is happening to your business. I have not reviewed the patent nor done any analysis on this, but just looking at the claims in view of your questions, here are a few comments that may be relevant.

(1) Manufacturing of fabrics has been around for millennia. There must be something drastically new about the patented manufacturing process. This patent likely is very narrow. The fact that the claims are likely narrow, is good news to you.

(2) If you've been manufacturing towels that way since before Dec 2016, then you should be fine.

(3) The 50%:50% is not that important to most of these claims. Unfortunately, you likely cannot get around by using a 65%:35% ratio.

(4) You need to take a look at your process. Since you are not using a coloring process, you likely do not need to worry about Claims 12 to 20.

(5) Take a look at the linear density and the filament count of your polyester, and the thickness of your cotton yarn. If all three fall within the scope of Claim 1 (i.e., 50D to 300D, 36F to 576F, and 6s to 40s, respectively), then you may have a problem, and you will definitely need to go see a patent attorney.

(6) If your fabric is somewhat close to these three ranges, then you are still not in the clear. You still need to see a patent attorney for help.

Good luck to you, and if you need someone to talk more about this, please feel free to reach out. ... Read More

Q. Can I propagate Ausjameson (a David Austin wedding rose) for commercial use now that its patent has expired?

February 7, 2025

A: I have not studied the patent that you are referring to, but generally, once a patent expires, it is no longer enforceable. You can use anything claimed in the patent for any reason.

This is generally true even if you took a license from the patent owner previously, and you promised him to pay royalties beyond the expiration of the patent. Such contracts are generally uneforeable beyond the term of the patent because they are considered a restriction of free trade.

One major caveat that you should be warned about is to ensure that the Ausjameson that is currently sold is not covered by another patent. What typically happens in companies that patent often is that by the time a patent on one of their products expires, they have already stopped producing that product and have replaced it with an improved version of product that is covered by another patent.

If the rose is the same as sold 20 years ago, then you are fine. If, on the other hand, it is a new variety, an improved version of Ausjameson, even if they call it the same name, then you need to be careful.

Good luck! ... Read More