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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Of Counsel
P: 312.913.3384
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Partner
P: 312.913.3390
F: 312.913.0002
P: 312.913.2142
F: 312.913.0002
P: 312.913.2132
F: 312.913.0002

Upcoming Events

July 25, 2017
MBHB partner Emily Miao, Ph.D. is the Featured Presenter at this MATTER Sponsored Workshop
July 25, 2017
July 27, 2017
MBHB Partner Dr. Andrew Williams Is the Featured Presenter
August 29, 2017
September 14, 2017
MBHB Partner Anthoula Pomrening Is the Featured Speaker for this Program
September 19, 2017
MBHB Partners Alison Baldwin and Paula Fritsch, Ph.D. Are Featured Presenters
October 15-17, 2017
MBHB Partner Bradley Hulbert Is a Featured Co-Speaker for this PRG-Sponsored Program
November 3, 2017
MBHB Partner Dr. Paul Tully Is a Featured Speaker

Past Event

June 20, 2017
MBHB Partner Dr. Kevin Noonan Is the Featured Moderator at this BIO 2017 Program
June 19, 2017
MBHB attorney Aaron Gin, Ph.D. is the Featured Presenter at this MATTER Sponsored Workshop
May 24, 2017
MBHB Partner Kevin Noonan, Ph.D. Is the Featured Speaker
May 17-18, 2017
MBHB Partner Bradley Hulbert Is a Featured Presenter
May 16, 2017

Publications

June 19, 2017 (snippets Alert)

This morning, in Matal v. Tam, previously Lee v. Tam, the Supreme Court handed down its most impactful interpretation of the disparagement clause of the Lanham Act to date by holding that at its intersection with the First Amendment, the disparagement clause violates the First Amendment’s Free Speech Clause.  

June 12, 2017 (snippets Alert)
Today, in Oil States Energy Services v. Greene’s Energy Grp., LLC, Case No. 16-712, the Supreme Court accepted certiorari on the question of whether the IPR regime set out by Congress in the AIA is constitutional. At issue is whether, once patents are issued, the resulting patent rights are a “public right,” in which case their validity can be resolved by an agency, or a “private property right,” in which case the validity issues must be addressed by Article III courts and arguably subject to the Seventh Amendment’s right to trial by jury.
Spring 2017 (snippets)
In part because of RCE and Appeal backlogs, the USPTO has introduced several post-examination programs to speed-up patent prosecution, increase collaboration between examiners and applicants, and reduce the number of RCE and Appeal filings. In this paper, we discuss several procedural options available to applicants after receiving a final rejection, advantages/disadvantages of each option, and conclude with suggestions on how to select the best option depending on the situation.
Spring 2017 (snippets)
Data analytics services now provide patent practitioners the ability to easily determine tendencies of patent examiners, which allows them to amend their prosecution strategies accordingly. This article focuses on the information provided by such services, and provides three particular scenarios where examiner-specific analytics can be used to update prosecution strategy.
Spring 2017 (snippets)
Counterfeiting is not a problem limited to items such as luxury handbags or designer sunglasses, but one that extends to many industries—from pharmaceuticals to automotive parts, consumer electronics to cosmetics, computers to personal care products. Thus, the problems imposed on society by counterfeiting are far-reaching, and, according to recent studies, only growing.
Spring 2017 (snippets)
Recently, the Supreme Court delivered a rare victory for many intellectual property (IP) owners in its recent decision: Star Athletica, L.L.C. v. Varsity Brands, Inc. Here, we attempt to unpack what little clear, practical guidance may be garnered from this decision.
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