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
Technical Advisor
P: 312.913.3316
F: 312.913.0002
P: 312.913.3342
F: 312.913.0002
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Associate
P: 312.913.3305
F: 312.913.0002
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Associate
P: 312.913.2124
F: 312.913.0002
P: 312.913.2106
F: 312.913.0002
P: 312.913.3331
F: 312.913.0002
P: 312.935.2371
F: 312.913.0002
Patent Agent
P: 312.913.3319
F: 312.913.0002
P: 312.913.2123
F: 312.913.0002
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F: 312.913.0002
Patent Agent
P: 312.913.3380
F: 312.913.0002
P: 312.913.3398
F: 312.913.0002
Associate
P: 312.913.2125
F: 312.913.0002
P: 312.913.3311
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Associate
P: 312.913.2113
F: 312.913.0002
P: 312.913.3393
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P: 312.913.2112
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F: 312.913.0002
Patent Agent
P: 312.913.3358
F: 312.913.0002
P: 312.913.2101
F: 312.913.0002
P: 312.935.2359
F: 312.913.0002
Patent Agent
P: 312.913.2357
F: 312.913.0002
P: 312.913.3344
F: 312.913.0002
P: 312.913.2126
F: 312.913.0002
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P: 312.935.2370
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F: 312.913.0002
P: 312.913.3396
F: 312.913.0002
Technical Advisor
P: 312.913.3394
F: 312.913.0002
P: 312.913.2147
F: 312.913.0002
P: 312.913.3349
F: 312.913.0002
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P: 312.935.2366
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P: 312.935.2353
F: 312.913.0002
P: 312.913.3359
F: 312.913.0002
Of Counsel
P: 312.913.3337
F: 312.913.0002
P: 312.913.3348
F: 312.913.0002
P: 312.913.3329
F: 312.913.0002
P: 312.913.3300
F: 312.913.0002
P: 312.935.2379
F: 312.913.0002
P: 312.913.2128
F: 312.913.0002
P: 312.913.3368
F: 312.913.0002
P: 312.913.2138
F: 312.913.0002
P: 312.913.3301
F: 312.913.0002
P: 312.913.2114
F: 312.913.0002
Partner
P: 312.913.3390
F: 312.913.0002
Associate
P: 312.913.2142
F: 312.913.0002
P: 312.913.2132
F: 312.913.0002

Upcoming Events

May 28, 2015
MBHB Partner Patrick G. Gattari is the Featured Presenter
June 3, 2015
June 25-26, 2015
MBHB Partners James Suggs and Nicole Reifman are Featured Course Leaders for this Management Forum-Sponsored Program

Past Event

May 22, 2015
MBHB Partner Bradley Hulbert Is a Featured Presenter
May 21, 2015
May 13, 2015
MBHB Partner Dr. Kevin Noonan Is a Featured Presenter
May 13-15, 2015
MBHB Partner Dr. Kevin Noonan Is a Featured Presenter
May 12-14, 2015
MBHB Partners Dr. Kevin Noonan and Dr. Donald Zuhn are Featured Presenters at this PLI-Sponsored Seminar

Publications

March 27, 2015 (snippets Alert)
MBHB snippets Alert - March 27, 2015

On Friday, March 27, Director Lee issued a statement on the PTO Blog, indicating several current and proposed “quick-fix” rule changes. Immediate changes include nearly doubling the number of pages for a motion to amend to up to 25 pages, along with the addition of a claims appendix. Opposition briefing and reply briefing will get a commensurate amount of additional pages. Judges will begin implementing these changes through scheduling orders effective immediately.
Winter 2015 (snippets)
This article highlights some of the takeaway lessons from the Patent Trial and Appeal Board’s decisions and guidance with regard to three of the most important issues: the content of the substitute claim set, the burden of proof, and the requirement of the patent holder to establish patentability of the substitute claims.
Winter 2015 (snippets)
It has been about 9 months since Alice Corp. v. CLS Bank International was decided by the Supreme Court. In that time, many district court and Federal Circuit cases have resulted in grants of summary judgment or dismissal based on findings of patent invalidity. Specifically, courts have found the patents at issue to be directed to patent-ineligible subject matter based on the two part framework laid out in Mayo Collaborative Services v. Prometheus Laboratories, Inc., as reiterated and refined in Alice.
Winter 2015 (snippets)
Anticipation is easy enough to establish if the prior art expressly sets forth each of the elements of the claims. However, more interesting issues of proof arise when one or more elements of the claims are not expressly stated in the prior art, but following the prior art necessarily yields the missing elements of the claim.
Winter 2015 (snippets)
Foreign patent filing decisions should take into account all of the potential additional costs associated with filing, prosecution, and annuity fees, as well as translation and legal service costs for hiring patent practitioners in each jurisdiction. In this article, five tips are discussed for developing a cost-effective strategy for obtaining foreign patent protection.
Winter 2015 (snippets)
In a 9-0 decision authored by Justice Sotomayor, the Supreme Court held on January 21, 2015 that trademark tacking is a question of fact, which should be decided by a jury. The case, Hana Financial, Inc. v. Hana Bank, sought to resolve the circuit split regarding this issue of whether a judge or a jury should decide the issue of trademark tacking.
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