Donald L. Zuhn, Jr. Ph.D.

Partner
P: 312.913.2132
F: 312.913.0002
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Highlights

  • University of Illinois at Chicago (Ph.D.), Mammalian Genetics; Doctoral Research: Analysis of the structure and function of protein domains of human P-glycoprotein through the use of genetic suppressor elements encoding antisense RNA molecules and truncated proteins
  • Loyola University Chicago (B.S.), Biology
  • The John Marshall Law School (J.D.), Summa Cum Laude, Fred F. Herzog Scholarship; Dean's Scholarship; John N. Jewitt Scholarship; The John Marshall Law Review, Review of Intellectual Property Law, Lead Articles Editor

  • Illinois
  • U.S. Patent & Trademark Office

  • U.S. District Court for the Northern District of Illinois

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


 

News

Patent Docs Blog Selected for Inclusion in the 2012 ABA Journal Blawg 100
Patent Docs Tops Pharma IQ's Top 10 Legal and Regulatory Blogs
MBHB Attorneys File Amicus Brief in Lilly v. Sun Pharma
MBHB partner Don L. Zuhn, Ph.D., quoted in The Daily Deal
MBHB Partners to lead discussions at the Northwestern JTIP Fifth Annual Symposium
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Past Events

May 14-16, 2013
Fundamentals of Patent Prosecution 2013: A Boot Camp for Claim Drafting & Amendment Writing
MBHB Partners Kevin Noonan and Donald Zuhn are Featured Presenters at this PLI-Sponsored Seminar
February 14, 2013
Last Chance! The Top Ten Things In-House Counsel Need to Do to Prepare for The AIA’s March 2013 Deadline (Live Webinar)
Live MBHB Webinar Featuring MBHB Partners Grantland Drutchas and Donald Zuhn, Ph.D.
January 22, 2013
Top Patent Law Stories of 2012 (Live Webinar)
Live MBHB Webinar Featuring MBHB Partners Kevin Noonan, Ph.D. and Donald Zuhn, Ph.D.
December 12, 2012
Saving the Best for Last: the Top Ten Things In-House Counsel Need to Do to Prepare for The AIA’s March 2013 Deadline (Live Webinar)
Live MBHB Webinar Featuring MBHB Partners Grantland Drutchas and Donald Zuhn, Ph.D.
May 16-18, 2012
Fundamentals of Patent Prosecution 2012: A Boot Camp for Claim Drafting & Amendment Writing
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Publications

Spring 2013 (snippets)
Comments on New AIA Rules
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)
Preparing for the Final Phase of the America Invents Act Going Into Effect March 16, 2013
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)
On the Brink of Change--Congress Passes Patent Reform
Spring 2010 (snippets)
A First Look at the Abbreviated Follow-on Biologic Regulatory Pathway
Spring 2009 (snippets)
The USPTO's New Written Description Training Materials: Impact on Biotech
Summer 2008 (snippets)
Where Does the USPTO Go after Tafas/GSK v. Dudas?
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