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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Associate
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Patent Agent
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Patent Agent
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Technical Advisor
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Patent Agent
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Patent Agent
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Technical Advisor
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Associate
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Partner
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Upcoming Events

May 9, 2014
MBHB Partner Brad Hulbert is a Featured Co-Presenter at this Management Forum-Sponsored Conference
May 12, 2014
MBHB Partner Brad Hulbert is a Featured Co-Presenter at this Management Forum-Sponsored Conference
May 13-15, 2014
MBHB Partners Dr. Kevin Noonan and Dr. Donald Zuhn are Featured Presenters at this PLI-Sponsored Seminar
May 23, 2014
MBHB Partner Lisa Schoedel Is the Featured Presenter for this IEEE-Sponsored Program
May 29, 2014
MBHB Partner James McCarthy Is the Featured Presenter
June 25, 2014
MBHB Partner Dr. Donald Zuhn is the Featured Moderator at this BIO 2014 Session
September 11-12, 2014
Five MBHB Partners Are Featured Presenters at this PLI-Sponsored Seminar

Past Event

April 22, 2014
MBHB Partner Joshua R. Rich Is the Featured Presenter
April 3-5, 2014
MBHB Partner Brad Hulbert is a Featured Co-Presenter at this Patent Resources Group-Sponsored Conference
March 25, 2014
February 18, 2014
January 21, 2014
MBHB Attorneys Kevin E. Noonan, Ph.D. and Donald L. Zuhn, Jr., Ph.D. Are the Featured Presenters

Publications

Winter 2014 (snippets)
Much analysis of data privacy issues in recent years has focused on the European Union. However, there have also been significant efforts regarding data protection in the Asia-Pacific region, an area of ever-increasing focus for patent practitioners. This article addresses the role of regional organizations in developing and enforcing policies, laws and regulations throughout the Asia-Pacific arena, and considers the potential impacts of ongoing national and international efforts to protect the right of privacy.
Winter 2014 (snippets)
On May 5, 2011, the United States Patent and Trademark Office kicked off a new program intended to give applicants and examiners an opportunity to discuss the substance of a patent application before a formal, written examination report is mailed to the applicant. Dubbed the First Action Interview Pilot Program, it requires that the applicant electronically file, at least one day before the first action on the merits is mailed, a Request for First Action Interview.
Winter 2014 (snippets)
Both the executive and legislative branches of the U.S. government have been working on patent reform. For example, the White House released a report last June entitled “Patent Assertion and U.S. Innovation,” accompanied by several executive initiatives and legislative recommendations. In addition, several pieces of legislation have been introduced in both the House and the Senate to address this perceived “patent troll” problem. As Sens. Leahy and Lee explained, the goal of such legislation is “to make it harder for bad actors to succeed, while preserving what has made America’s patent system great.” The difficulty is in narrowly crafting such legislation to specifically address the perceived problems without also ensnaring legitimate patent holders, and without introducing unexpected negative consequences for the patent system as a whole.
Fall 2013 (snippets)
In Ex parte Mewherter, a recent decision by the Patent Trial and Appeal Board (PTAB) at the United States Patent and Trademark Office (USPTO), the Board handed down a precedential decision regarding the language of computer-readable medium (CRM) claims. Particularly, this decision established that computer readable storage media (CRSM) claims are not patent eligible unless the claims recite the magic term “non-transitory,” or the specification adequately limits the term “storage media” to exclude signals, carrier waves, or other transitory signals. These transitory signals are not patentable subject matter under the Federal Circuit's In re Nuijten decision, because they do not fall into any of the four statutory categories (i.e., process, machine, manufacture, or composition) set forth in 35 U.S.C. § 101.
Fall 2013 (snippets)
The Federal Circuit’s Model Order has prompted national reform in the way that discovery is handled in the Digital Age. It has introduced a paradigm shift away from using discovery costs as a tactical threat and towards cooperation between parties to expedite the discovery process. Software techniques such as predictive coding and technology-assisted review are being proven to be more effective and efficient than purely human review, and judges are finding favor in utilizing them to expedite the e-discovery process. As more judges become informed of the faster, cheaper, and more effective software techniques to filter ESI, refusal to utilize such techniques will be seen as a hindrance to “just, speedy, and inexpensive determination.”
Fall 2013 (snippets)
On September 16, 2012, Inter Partes Review (IPR) replaced Inter Partes Reexamination (IPX) as an avenue for third party patentability challenges in the United States Patent and Trademark Office (PTO). Arising from the 2011 Leahy-Smith America Invents Act (AIA), this change has transformed inter partes challenges “from an examinational to an adjudicative proceeding.” In other words, the old “prosecution-like” IPX practice has given way to a streamlined “mini-trial” IPR process that could provide cost and time benefits to challengers and patentees alike. As IPR just passes its one year anniversary, this article aims to compare IPR with the old IPX process, provide an update of the most recent case law, and offer relevant IPR practice tips.
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