Donald L. Zuhn, Jr. Ph.D.

P: 312.913.2132
F: 312.913.0002

Donald L. Zuhn, Jr. is a partner with McDonnell Boehnen Hulbert & Berghoff LLP. Dr. Zuhn has more than a decade of experience in all aspects of patent prosecution, litigation, counseling, and licensing. He represents a variety of clients, including biotechnology and pharmaceutical companies both large and small, and universities.

Dr. Zuhn joined MBHB in 1998. He maintained a full-time position as a law clerk while attending law school at night until his graduation in 2002.

Published Articles

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

Contributor to Patently-O, a patent law weblog.

Donald L. Zuhn, Jr. and Paul H. Berghoff, "The Evolution of the Written Description Requirement in the Context of Biotechnological Inventions", Midwestern Biotech Intellectual Property Law Symposium, June 2004

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

"DNA Patentability: Shutting the Door to the Utility Requirement", The John Marshall Law Review, Summer 2001



IAM Patent 1000

Best Lawyers in America

Past Events

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
August 27, 2015
MBHB Partners Grantland G. Drutchas and Dr. Donald L. Zuhn, Jr.., Ph.D. Are the Featured Presenters
July 20-21, 2015
MBHB Partners Kevin Noonan, Donald Zuhn and Paul Tully Are Featured Presenters
May 12-14, 2015
MBHB Partners Dr. Kevin Noonan and Dr. Donald Zuhn are Featured Presenters at this PLI-Sponsored Seminar
January 20, 2015
MBHB Attorneys Donald L. Zuhn, Jr., Ph.D., Kevin E. Noonan, Ph.D. and Michael S. Borella, Ph.D. Are the Featured Presenters


Spring 2014 (snippets)
On March 4, in a memorandum issued to the Patent Examining Corps by Deputy Commissioner for Patent Examination Policy Andrew Hirshfeld, the U.S. Patent and Trademark Office (“USPTO”) implemented a new procedure for determining the subject matter eligibility of all claims involving laws of nature/natural principles, natural phenomena, and/or natural products under 35 U.S.C. § 101. The memorandum, entitled “Guidance For Determining Subject Matter Eligibility Of Claims Reciting Or Involving Laws of Nature, Natural Phenomena, & Natural Products” (the “Guidance Memo”), was intended to assist examiners on this issue in view of the Supreme Court's decisions in Association for Molecular Pathology v. Myriad Genetics, Inc. and Mayo Collaborative Services v. Prometheus Laboratories, Inc. On March 19, the USPTO supplemented the Guidance Memo with additional training materials for patent examiners to help implement the Guidance Memo, which took the form of a presentation comprising nearly one hundred slides (the “Training Materials”).
Spring 2013 (snippets)
On March 16, 2013, the final (and most significant) portion of the Leahy-Smith America Invents Act (AIA) took effect, and the United States broke from a first-to-invent regime to a first-inventor-to-file (FITF) regime. Of course, this break is far from clean as applications filed before March 16, 2013, as well as certain applications filed after March 15, 2013, will continue to enjoy the advantages of the old first-to-invent system. Since the AIA was enacted on September 16, 2011, the U.S. Patent and Trademark Office (USPTO) has played an important role in implementing the new patent law. In the eighteen months between the statute's enactment and the March 16 effective date, the USPTO published twelve notices of proposed rulemaking, issued a patent trial practice guide, and published a guidance document on the FITF provisions of the AIA, all of which culminated in the revision of the rules of practice in title 37 of the Code of Federal Regulations (C.F.R.). Set forth in this article are a few rule revisions that practitioners should pay careful attention to as we proceed into the FITF regime.
February 11, 2013 (snippets Alert)
The final phase of the America Invents Act (AIA) takes effect on March 16, 2013. This means that any patent application filed in the U.S. on or after that date, which, at any time during its pendency, contains a claim that is not fully supported in an application filed before March 16, 2013, will be subject to the new first-inventor-to-file rules under the AIA. As a result of this imminent change in U.S. patent law, it is recommended that companies consider several options.
Summer 2011 (snippets)
Spring 2010 (snippets)
Spring 2009 (snippets)
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