2021 INTELLECTUAL PROPERTY / INFORMATION TECHNOLOGY LAW Q&A

Peter J. Van Bergen

Patent Attorney, Williamsburg

Title: Owner 

Education: Bachelor’s degree, Bucknell University; law degree, William & Mary
School of Law

Spouse: Jamie

Children: We raised our three great children (Elizabeth, Luke and John) in Williamsburg.

Hobbies: Swimming, biking, running, kayaking, triathlon, reading 

Career mentors: David Blumenthal

What is the biggest current challenge for protecting intellectual property? Trying to figure out if and how you can get utility patent protection to “work” for software-based inventions, given the Patent Office’s tedious “subject matter eligibility” criteria. While you can always utilize other types of IP protections for software, there is often a lot of creativity in software that can and should be rewarded with utility patent protection. The trick is to craft a patent application that captures the client’s creativity in a format that satisfies the Patent Office’s subject matter eligibility criteria.

What areas of technology are most popular for patents these days? All technologies are well-represented in patents today. I am currently helping clients protect inventions ranging from simple and clever consumer goods to complex artificial intelligence systems. Creativity happens at all levels of complexity.

You’re also an inventor. What did you invent? In the early to mid-’90s, I invented and patented a fingerless mitten (Patent No. 5,172,427) and marketed it under the trademark “S’warms.” I came up with the idea when out on a cold morning run. It was a very simple product that utilized four types of IP (patent, trademark, copyright and trade secret). I appeared on QVC for several seasons and licensed the patent/trademark out to a golf products manufacturer for the golf market. I still use that experience as a teaching tool for new clients.