Counseling

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The most important service we provide to our clients is advice, along with the skills to implement it. We counsel clients on the management and development of their intellectual property assets, advising clients on issues of patent validity, infringement, and the introduction of new products. Our expertise in business consulting and patent law has been a valuable resource for clients in e-commerce, finance, and other fields.

Our creative, cost-effective strategies are designed to help our clients achieve specific business objectives as well as further long-term business goals. We help establish and maintain effective programs for identifying and patenting key inventions. We also offer strategic advice on the development of patent and trademark portfolios and the exploitation of innovations through licensing. We evaluate potential litigation risks and suggest strategies for avoiding litigation, and we issue opinions regarding the scope, validity, and enforceability of patents and patent portfolios. At MBHB, we also provide advice when assessing the likely outcomes of litigation and in acquisition-related due diligence investigations.

The high-level education and experience earned by our attorneys gives us the skill and industry knowledge we need to help our clients make the decisions that are best for their business, from the beginning.

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Senior Patent Agent
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Associate
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Partner
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Associate
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F: 312.913.0002

Upcoming Events

July 27, 2016
MBHB Partner James McCarthy is the Featured Presenter
September 14-15, 2016
PLI-Sponsored 2-Day Seminar Features 5 MBHB Partners as Presenters
October 19-21, 2016
MBHB Partner Bradley Hulbert Is a Featured Co-Speaker for this PRG-Sponsored Program

Past Event

June 15, 2016
June 11, 2016
MBHB Partner Kirsten Thomson Is a Featured Presenter for this Program
June 7, 2016
May 25, 2016
MBHB Partner Dr. Kevin Noonan Is a Featured Presenter at this IPO-Sponsored Webinar
May 25, 2016
MBHB Partner Dr. Kevin Noonan Is the Featured Presenter at this ALA-Sponsored Session

Publications

June 27, 2016 (snippets Alert)
By now, everyone has likely heard about the United Kingdom’s vote last week to leave the European Union. Few things are certain at this time, as governments around the world are still making plans to deal with Brexit. Once the UK formally requests withdrawal (which may still be months away), its transition out of the EU will be a lengthy process. As of now, no laws have changed as a result of the UK vote last week. We therefore do not recommend taking any drastic action at this time. We do, however, recommend that any businesses with a presence in the EU begin planning for the changes that will ultimately affect trademark and design rights in Europe.
June 20, 2016 (snippets Alert)
MBHB snippets Alert - June 20, 2016

In its first pronouncement regarding the post-grant reviewing proceedings established by the America Invents Act (“AIA”), the Supreme Court ruled that the Patent and Trademark Office’s positions on two of the law’s provisions regarding inter partes review (“IPR”) were correct. First, the Court held unanimously that the PTO properly applied the “broadest reasonable interpretation” standard for claim construction for IPRs. Second, six members of the Court also agreed that the statute mandated that the decision to institute an IPR was not subject to judicial review.
June 14, 2016 (snippets Alert)
MBHB snippets Alert - June 14, 2016

On June 13, 2016, the Supreme Court ruled unanimously, in an opinion by Chief Justice Roberts, that an award of enhanced damages pursuant to 35 U.S.C. § 284 should be within the sound discretion of a district court, albeit wherein this discretion is limited to “egregious cases of misconduct beyond typical infringement.” The decision in the combined Halo Electronics, Inc. v. Pulse Electronics, Inc. and Stryker Corp. v. Zimmer, Inc. cases reverses the Federal Circuit test established in In re Seagate Tech., LLC, which had required a patentee to satisfy a two-part test (having subjective and objective components) to establish willful infringement.
Spring 2016 (snippets)
On March 23, 2016, new rules came into effect substantially amending the Community trademark system in the European Union (the “amended Regulations”).  In this article, we discuss a number of points potentially relevant to U.S. brand owners, including (1) changes in terminology, (2) changes in fees, and, perhaps most important, (3) potential changes to the scope of protection of existing trademark registrations in the European Union.
Spring 2016 (snippets)
The “on-sale” bar to patentability refers to a sale or offer for sale of an invention that can invalidate the patent for that invention. The America-Invents-Act (AIA), which altered the language in the statutes that apply to the on-sale bar, has made it difficult to determine what actions might constitute a “sale” or an “offer for sale” under current law. Nevertheless, a clear understanding of the on-sale bar is necessary to enable entities of all sizes—from single inventors to large corporations—to effectively monitor activities surrounding their inventions, and to enable attorneys to provide such entities with accurate and useful advice.
Spring 2016 (snippets)
In March 2015, the FDA approved the first biosimilar application, which was for a follow-on biologic drug of Amgen’s reference product NEUPOGEN® (filgrastim). Yet, before the applicant, Sandoz, could launch its biosimilar under the brand name ZARXIO®, it had to wait for the Federal Circuit to interpret the controlling statute, the Biologics Price Competition and Innovation Act (“BPCIA”). This year, a different applicant with an approved biosimilar drug is in a very similar situation.
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