Biotechnology & Pharmaceuticals

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MBHB provides representation in our biotechnology and pharmaceuticals practice for patent procurement, litigation, due diligence, licensing, technology transfer, patent validity and infringement opinions, oppositions and post-grant proceedings, interference practice, and other areas of client counseling concerning a widely diverse array of biopharma subject matter.  Spearheaded by attorneys, patent agents, and technical advisors with advanced degrees in such areas as molecular biology, genetics, immunology, neurobiology, cellular biology, biophysics, molecular medicine, biomedical science, cancer biology, human nutrition, plant sciences, biochemistry, bio-organic chemistry, synthetic organic chemistry, and chemical engineering, our biotechnology and pharmaceuticals practice has the combination of technical expertise and legal experience that enables us to represent our clients in the most sophisticated arenas.

We work extensively with our clients on cutting-edge subject matter, such as antibiotics, monoclonal and engineered antibodies, oligonucleotides and recombinant genes, miRNA and siRNA, ribozymes, proteins and peptides, target discovery, stem cells, vaccines, combinatorial chemistry, therapeutic small molecules, pharmaceutical products, screening assays, diagnostic methods and assays, methods of treatment and use, and nanotechnology.

Our substantial experience extends worldwide and includes strategic development and protection of intellectual property for Fortune 500 multinational corporations, mid-sized and start-up biopharma companies, universities, and small and micro entities. We also have significant experience working with counsel in numerous countries and regions to help our clients secure global protection of their intellectual property.

Several of our team members contribute to the patent law blog, Patent Docs (www.patentdocs.org), recognized as one of the foremost patent law blogs.

Technical Advisor
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Senior Patent Agent
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Senior Patent Agent
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Technical Advisor
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Upcoming Events

April 18, 2017
MBHB Partner Joshua Rich Is the Featured Presenter
May 9-11, 2017
MBHB Partners Dr. Kevin Noonan and Dr. Donald Zuhn Are Featured Presenters

Past Event

March 14, 2017
MBHB Partners Dr. Andrew Williams and James Lovsin Are the Featured Presenters
March 7, 2017
MBHB Partner Dr. Emily Miao is a Featured Presenter
March 7, 2017
MBHB Partner Dr. Andrew Williams Is Featured Presenter
January 19, 2017
MBHB Partners Dr. Michael Borella, Dr. Kevin Noonan and Dr. Donald Zuhn Are Featured Presenters
January 17, 2017
MBHB Partner Kirsten Thomson Is a Featured Presenter

Publications

March 21, 2017 (snippets Alert)
As was widely expected from the Justices’ positions at oral arguments, a nearly unanimous Supreme Court today struck down the patent laches doctrine in SCA Hygiene Prods. Aktiebolag, v. First Quality Baby Prods., LLC, 580 U.S. __ (March 21, 2017). In the opinion by Justice Alito, the Supreme Court applied the rationale of its own prior decision in Petrella v. Metro-Goldwyn-Mayer, Inc., 134 S. Ct. 1962 (2014), finding that the existence of a six-year statute of limitations in the Patent Act, 35 U.S.C. §286, precluded the application of laches. As such, “laches cannot be interposed as a defense against damages where the infringement occurred within the period prescribed by §286.”
Winter 2017 (snippets)
Owners of U.S. trademark registrations need to know about a few recent rule changes and be mindful of the changes and U.S. Patent and Trademark Office requirements whenever a declaration of use is due.
Winter 2017 (snippets)
In 2011, the Leahy-Smith America Invents Act (“AIA”) established new post-issuance procedures for challenging the validity of a granted patent before the Patent Trials and Appeal Board (“PTAB” or “Board”). Inter partes reviews (“IPRs”) and Covered Business Method patent reviews (“CBMs”) have been available since September 16, 2012, and their utilization since that time has exceeded expectations. A third mechanism, post-grant review (“PGR”), was also made available on that date, but because a PGR petition can only be filed for patents that were examined pursuant to the new First-Inventor-to-File scheme established by the AIA, it has not yet been significantly utilized. Here, we describe the IPR and PGR estoppel provisions of 35 U.S.C. §§ 315(e) and 325(e) and courts’ interpretations of those provisions thus far.
Winter 2017 (snippets)
Seeking to end years of little clarity on two key ethical issues for practitioners, the Patent Office has proposed two new rules of practice. The first rule would allow parties to invoke privilege in inter partes proceedings to prevent the disclosure of communications between clients and non-attorney patent agents. The second rule would change the duty of disclosure to comport with the standard set forth in the Therasense case. Based on the comments from the public, it appears likely that the Office will adopt the patent-agent privilege rule but go back for another round of changes to the duty of disclosure rule.
February 22, 2017 (snippets Alert)
MBHB snippets Alert - February 22, 2017

In an opinion by Justice Sotomayor, the Supreme Court today reversed the Federal Circuit's decision in Life Tech. Corp. v. Promega Corp. involving the proper scope of infringement under 35 U.S.C. § 271(f)(1). This provision provides infringement for exporting "all or a substantial portion of the components of a patented invention," and the Court's decision involved whether exporting only one component was enough for infringement liability.
Fall 2016 (snippets)
In a highly publicized decision of over a year ago, Judge Swain of the U.S. District Court of the Southern District of New York ruled in favor of the luxury retailer Tiffany and Co., deciding that Costco Wholesale Corp. willfully infringed Tiffany’s trademark. Judge Swain’s initial ruling against Costco allowed Tiffany to take Costco before a jury to seek damages, including recovery of Costco’s profits from the sale of the diamond rings, statutory damages, and punitive damages. After several delays, the jury finally met at the end of September for “Phase I” of the trial during which they decided (1) the amount of Costco’s profits and statutory damages under the Federal Lanham Act, and (2) whether Tiffany was entitled to punitive damages.
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