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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F: 312.913.0002
Patent Agent
P: 312.913.3316
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Patent Agent
P: 312.913.3319
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Patent Agent
P: 312.913.3380
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P: 312.913.3398
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Associate
P: 312.913.2125
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Technical Advisor
P: 312.913.3362
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Patent Agent
P: 312.913.3358
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Patent Agent
P: 312.913.3394
F: 312.913.0002
P: 312.913.2147
F: 312.913.0002
P: 312.913.3349
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Associate
P: 312.913.3339
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P: 312.935.2379
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P: 312.913.2128
F: 312.913.0002
Patent Agent
P: 312.913.3363
F: 312.913.0002
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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Associate
P: 312.913.2142
F: 312.913.0002
P: 312.913.2132
F: 312.913.0002

Upcoming Events

May 18, 2016
May 25, 2016
MBHB Partner Dr. Kevin Noonan Is the Featured Presenter at this ALA-Sponsored Session
June 15, 2016

Past Event

April 26, 2016
MBHB Partner Patrick Gattari is the Featured Presenter at this MATTER-Sponsored Program
April 12, 2016
April 12, 2016
MBHB Partner Dr. Emily Miao is the Featured Presenter at this MATTER-Sponsored Program
April 7, 2016
MBHB Partner Grant Drutchas Is a Featured Speaker at Chicago-Kent College of Law-Sponsored Program
March 16, 2016
MBHB Partner Daniel Boehnen and Bristows LLP Partner Edward Nodder Are the Featured Co-Presenters

Publications

Winter 2016 (snippets)
February 4, 2016, marked the one-year anniversary of the initial In re Cuozzo Speed Technologies, LLC Federal Circuit decision – the first opinion stemming from the first appeal of the first final written decision of the first inter partes review (“IPR”) ever filed. From the time that decision came out until the end of January 2016, there have been at least 56 appeals from IPRs and Covered Business Method (“CBM”) patent reviews resolved by this appeals court.
Winter 2016 (snippets)
The Defend Trade Secrets Act of 2015, a bill to establish a federal cause of action for trade secret misappropriation, has continued its progress through Congress with a favorable hearing before the Senate Judiciary Committee on December 2, 2015, that led to unanimous committee approval of an amended version on January 28, 2016. Despite the legislative logjam created by the impending election, and the failure to pass a similar bill during the last term of Congress, there is a significant probability that the bill will pass into law.
Winter 2016 (snippets)
The USPTO offers a spectrum of programs that can be used to expedite examination of patent applications, which include Prioritized Examination (PE), Accelerated Examination (AE), the Patent Prosecution Highway (PPH), Petitions to Make Special (PTMS), Full First Action Interviews (FFAI), the After Final Consideration Pilot (AFCP 2.0) program, and the Collaborative Search Pilot (CSP) program.
Winter 2016 (snippets)
It has been over 20 months since the Supreme Court handed down the landmark decision in Alice Corp. v. CLS Bank Int’l, effectively limiting the scope of patent-eligible subject matter. In particular, software and business method patents and applications now receive a higher level of scrutiny under Alice than had previously been the case.
Fall 2015 (snippets)
Trademarks are valuable tools for businesses since they allow a trademark holder to identify and distinguish its goods from those manufactured or sold by others. However, there are many issues to be aware of when seeking trademark protection.
Fall 2015 (snippets)
According to a recent court ruling, Costco sold counterfeit diamond engagement rings bearing the Tiffany name and confused relevant consumers by using the word “Tiffany” in display case signage. The court rejected Costco’s fair use defense and assertion that Tiffany’s trademarks were invalid because they sought to prevent others from using the word “Tiffany” as a generic description of a type of ring setting. Under the ruling, Tiffany can now take Costco before a jury to seek damages, including recovery of Costco’s profits from the sale of the diamond rings and punitive damages.
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