Donald L. Zuhn, Jr. Ph.D.

Partner
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


 

Distinctions

IAM Patent 1000

Best Lawyers in America

Past Events

October 2, 2014
MBHB Partners Kevin Noonan, Ph.D. and Donald Zuhn, Jr., Ph.D. Are the Featured Co-Presenters
September 11-12, 2014
Five MBHB Partners Are Featured Presenters at this PLI-Sponsored Seminar
July 9, 2014
MBHB Partners Grantland Drutchas and Donald Zuhn, Ph.D. Are the Featured Co-Presenters
June 25, 2014
MBHB Partner Dr. Donald Zuhn is the Featured Moderator at this BIO 2014 Session
May 13-15, 2014
MBHB Partners Dr. Kevin Noonan and Dr. Donald Zuhn are Featured Presenters at this PLI-Sponsored Seminar

Publications

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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