Prosecution

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Securing basic rights of ownership through the procurement of patents, registered trademarks, and copyrights is the foundation of an effective intellectual property strategy. Our clients know that their procurement strategy is in good hands. We always make sure our clients and their intellectual property assets are well-protected.

We craft prosecution strategies focused on our clients' business goals. We are skilled in all aspects of prosecution, including patent interference, re-examination, reissue, and opposition proceedings, as well as trademark opposition and cancellation proceedings, both in the United States and internationally. Our patent attorneys and patent agents are adept in all aspects of patent procurement, including drafting applications and prosecuting them before the U.S. Patent and Trademark Office and abroad.

Our attorneys provide patent prosecution and counseling services in a wide range of technical areas, including biotechnology, business methods, chemical, computing, electrical, mechanical and materials, pharmaceuticals and diagnostics, and telecommunications. Our broad patent litigation experience in enforcement and defense gives us an advantage in prosecution situations. We understand all sides of the issues that our clients face, so we are always ready to aggressively pursue and defend their rights.

At MBHB, our attorneys have unparalleled prosecution experience and technical knowledge.

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Technical Advisor
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Patent Agent
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Senior Patent Agent
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Master Patent Agent
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Patent Agent
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Senior Patent Agent
P: 312.913.3358
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P: 312.913.2101
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Of Counsel
P: 312.913.3384
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Patent Agent
P: 312.913.3363
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P: 312.913.3368
F: 312.913.0002
P: 312.913.2138
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Partner
P: 312.913.3390
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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)
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)
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.
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)
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.
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