Kevin E. Noonan, Ph.D.

P: 312.913.2145
F: 312.913.0002

Kevin E. Noonan is a partner with McDonnell Boehnen Hulbert & Berghoff LLP. An experienced biotechnology patent lawyer, Dr. Noonan brings more than 20 years of extensive work as a molecular biologist studying high-technology problems in serving the unique needs of his clients. His practice involves all aspects of patent prosecution, interferences, and litigation. He represents pharmaceutical companies both large and small on a myriad of issues, as well as several universities in both patenting and licensing to outside investors. He has also filed amicus briefs to district courts, the Federal Circuit and the Supreme Court involving patenting issues relevant to biotechnology. He has authored amicus curiae briefs in landmark patent and other cases in U.S. Courts of Appeals and the U.S. Supreme Court.

Dr. Noonan is a frequent speaker, commentator and author on a variety of intellectual property law topics. He is a founding author of the Patent Docs weblog, a site focusing on biotechnology and pharmaceutical patent law. In 2010, he was interviewed for a segment that aired on the television program "60 Minutes" that addressed the issue of gene patenting.

Published Articles

Founding author of the Patent Docs weblog, a site focusing on biotechnology and pharmaceutical patent law.

Contributing author, Regenerative Medicine Ethics: Governing Research and Knowledge Practices (Hogan, L., ed), Springer Press 2014

Contributing author, Claim Construction and the Federal Circuit, (The Intellectual Property Law Association of Chicago Litigation Committee, Manzo, E., ed.), West Publishing Co., 2007-2014

Contributing author, Gene Patents and Personalized Cancer Care: Impact of the Myriad Case on Clinical Oncology, Journal of Clinical Oncology, July 20, 2013, Vol. 31 No. 21: 2743-2748

"The latest on the gene patenting case Association for Molecular Pathology v. Myriad Genetics," Westlaw Journal Intellectual Property, October 31, 2012, Vol. 19, Issue 14

Contributing author, Annual Review of Intellectual Property Law Developments 2010, (ABA Section on Intellectual Property Law, Thomas, L., ed), American Bar Association Press, (multiple years)

"An antidote to the politics of the human gene patenting debate,” SCOTUS blog, February 6, 2013

"The Supreme Court's Prometheus Decision and Its Meaning for Diagnostic Method Claims," Biotechnology Law Report, June 2012, Vol. 31, No. 3: 267-270

"Federal Trade Commission Rejected in 'Reverse Payment' Suit," CPI Antitrust Chronicle, June 2012 (2)

“FDA Issues Draft Guidelines for ‘Follow-on’ Biologic Drug Approval Pathway,” Pharmaceutical Compliance Monitor, April 9, 2012

"Supreme Court Sets Limits on the Bayh-Dole Act in Stanford v. Roche", BNA Life Science Law and Industry Report, July 1, 2011, p.1-3

"Little Light Shed on Method Claims Patent-Eligibility in Assoc. Medical Pathol. v. U.S. PTO", BNA Life Science Law and Industry Report, in press

"Round One Goes to the ACLU: Association of Molecular Pathologists v. Myriad Genetics", BNA Life Science Law and Industry Report, May 2010

"Biotechnology Patenting: What You Need to Know", BioLogical Quarterly, Winter/Spring 2010.

"Worldwatch Intellectual Property: Gene Patenting", Financier Worldwide, October 2009.

"Worldwide Pharmaceutical Drug Pricing and Patent Rights: A Recipe for Disaster?", Financier Worldwide, September 2009.

Kevin E. Noonan, Michael S. Greenfield, and Donald L. Zuhn, "Paradise Lost: The Uncertain Future of Research Tool Patents", Intellectual Property & Technology Law Journal, March 2003


DePaul University College of Law
  • Adjunct Professor, Biotechnology Patent Law

The John Marshall Law School
  • Adjunct Professor

IIT Chicago-Kent College of Law
  • Adjunct Professor 


Best Lawyers in America (2007-2016 editions)

Best Lawyers in America 2013 Chicago "Lawyer of the Year" in Biotechnology Law

IAM Patent 1000 (2013-2015 editions)

LMG Life Sciences 2012

Past Events

October 21, 2015

MBHB Partner Dr. Kevin Noonan Is a Featured Co-Presenter at this Innography-Sponsored Webinar

October 5, 2015
September 22, 2015
MBHB Partners Kevin E. Noonan, Ph.D. and Andrew W. Williams, Ph.D. Are the Featured Presenters
September 10-11, 2015
MBHB Partners Joseph Herndon, Bradley Hulbert, Kevin Noonan, Ph.D., Thomas Wettermann and Donald Zuhn, Jr., Ph.D. are Featured Presenters
July 20-21, 2015
MBHB Partners Kevin Noonan, Donald Zuhn and Paul Tully Are Featured Presenters


Summer 2015 (snippets)
The Supreme Court Brulotte v. Thys Co. decision stands for the rule that a patentee cannot receive royalties for activities falling within the scope of the patent claims once the patent has expired. Roundly criticized on economics grounds since it was handed down, the Supreme Court refused to walk back the Brulotte rule in a case decided at the end of the past term, Kimble v. Marvel Entertainment, LLC.
August 14, 2015 (snippets Alert)
MBHB snippets Alert - August 14, 2015

The Federal Circuit issued a unanimous en banc decision yesterday regarding when joint tortfeasors may be held liable for literal infringement in Akamai Technologies Inc. v. Limelight Networks, Inc. In its opinion, the court held that method claims can be literally infringed when individual steps of a claimed method are performed by more than one actor under certain circumstances.
July 22, 2015 (snippets Alert)
MBHB snippets Alert - July 22, 2015

In a seriously fractured decision, the Federal Circuit construed the provisions of the Biologics Price Control and Innovation Act (BPCIA or Act) in Amgen Inc. et al. v. Sandoz Inc. In doing so, the court limited the information available to biologic drug makers regarding a competitor’s application for a biosimilar product (adopting Sandoz’s argument). On the other hand, the decision extended the statutory exclusivity period enjoyed by innovator biologic drug makers relating to when the biosimilar applicant can enter the marketplace (as Amgen argued).
Summer 2014 (snippets)
The CLS Bank case is the most recent of the Court’s patent eligibility decisions, and the Court unanimously affirmed the Federal Circuit's per curiam opinion (itself an effort to apply the Court’s patent eligibility jurisprudence regarding computer-based methods) that all of Alice’s claims were too abstract to meet the requirements of § 101. The claims at issue included method claims (directed, according to the Court, to methods for implementing an intermediated settlement that are well-known in the art), system claims involving implementation of the method using a general purpose computer, and computer readable-media claims for directing a general purpose computer to implement the method. None of the distinctions thought heretofore to matter between claims to methods, systems, and computer-readable media made any difference to the Court.
June 18, 2013 (snippets Alert)
The Supreme Court ruled 5-3 on June 17, 2013 in favor of the Federal Trade Commission in FTC v. Actavis. Writing for the majority that included Justices Kennedy, Ginsburg, Sotomayor and Kagan, Justice Breyer’s opinion reversed the decision of the Eleventh Circuit Court of Appeals dismissing the FTC’s complaint that a “reverse payment” settlement agreement between an innovator drug maker and generic challengers in ANDA litigation was anticompetitive and violated the antitrust laws. The Court refused to accept the FTC’s position that such agreements are presumptively unlawful, holding that lower courts should apply an antitrust “rule of reason” analysis when evaluating such agreements.
June 17, 2013 (snippets Alert)
The Supreme Court ruled unanimously June 13, 2013 in favor of Plaintiffs/Petitioners in Association of Molecular Pathologists v. Myriad Genetics on the question of whether isolated DNA is patent eligible. The opinion found a distinction between isolated genomic DNA and fragments thereof (including oligonucleotides), which the Court found were not eligible for patenting under Section 101 of the patent statute, and “synthetic” cDNA, which the Court found did not occur in nature and evinced a sufficient degree of the “hand of man” to fall outside the scope of the Court’s exclusions to patent eligibility.
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