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
F: 312.913.0002
P: 312.913.3342
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Senior Patent Agent
P: 312.913.2146
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Technical Advisor
P: 312.913.2134
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Master Patent Agent
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P: 312.935.2371
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Senior Patent Agent
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P: 312.913.2123
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P: 312.913.2122
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P: 312.935.2372
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Senior Patent Agent
P: 312.913.3380
F: 312.913.0002
P: 312.913.3398
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Associate
P: 312.913.2125
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Patent Agent
P: 312.913.3362
F: 312.913.0002
P: 312.913.3311
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Senior Patent Agent
P: 312.913.3393
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Master Patent Agent
P: 312.913.3346
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P: 312.913.3338
F: 312.913.0002
P: 312.913.2112
F: 312.913.0002
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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
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F: 312.913.0002
P: 312.913.2145
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P: 312.913.3396
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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
F: 312.913.0002
Associate
P: 312.913.3339
F: 312.913.0002
P: 312.913.2118
F: 312.913.0002
P: 312.935.2366
F: 312.913.0002
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F: 312.913.0002
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F: 312.913.0001
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P: 312.913.3300
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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
F: 312.913.0002
P: 312.913.3301
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

July 27, 2016
MBHB Partner James McCarthy is the Featured Presenter
September 14-15, 2016
PLI-Sponsored 2-Day Seminar Features 5 MBHB Partners as Presenters
October 19-21, 2016
MBHB Partner Bradley Hulbert Is a Featured Co-Speaker for this PRG-Sponsored Program

Past Event

June 15, 2016
June 11, 2016
MBHB Partner Kirsten Thomson Is a Featured Presenter for this Program
June 7, 2016
May 25, 2016
MBHB Partner Dr. Kevin Noonan Is a Featured Presenter at this IPO-Sponsored Webinar
May 25, 2016
MBHB Partner Dr. Kevin Noonan Is the Featured Presenter at this ALA-Sponsored Session

Publications

June 20, 2016 (snippets Alert)
MBHB snippets Alert - June 20, 2016

In its first pronouncement regarding the post-grant reviewing proceedings established by the America Invents Act (“AIA”), the Supreme Court ruled that the Patent and Trademark Office’s positions on two of the law’s provisions regarding inter partes review (“IPR”) were correct. First, the Court held unanimously that the PTO properly applied the “broadest reasonable interpretation” standard for claim construction for IPRs. Second, six members of the Court also agreed that the statute mandated that the decision to institute an IPR was not subject to judicial review.
June 14, 2016 (snippets Alert)
MBHB snippets Alert - June 14, 2016

On June 13, 2016, the Supreme Court ruled unanimously, in an opinion by Chief Justice Roberts, that an award of enhanced damages pursuant to 35 U.S.C. § 284 should be within the sound discretion of a district court, albeit wherein this discretion is limited to “egregious cases of misconduct beyond typical infringement.” The decision in the combined Halo Electronics, Inc. v. Pulse Electronics, Inc. and Stryker Corp. v. Zimmer, Inc. cases reverses the Federal Circuit test established in In re Seagate Tech., LLC, which had required a patentee to satisfy a two-part test (having subjective and objective components) to establish willful infringement.
Spring 2016 (snippets)
In March 2015, the FDA approved the first biosimilar application, which was for a follow-on biologic drug of Amgen’s reference product NEUPOGEN® (filgrastim). Yet, before the applicant, Sandoz, could launch its biosimilar under the brand name ZARXIO®, it had to wait for the Federal Circuit to interpret the controlling statute, the Biologics Price Competition and Innovation Act (“BPCIA”). This year, a different applicant with an approved biosimilar drug is in a very similar situation.
Spring 2016 (snippets)
The “on-sale” bar to patentability refers to a sale or offer for sale of an invention that can invalidate the patent for that invention. The America-Invents-Act (AIA), which altered the language in the statutes that apply to the on-sale bar, has made it difficult to determine what actions might constitute a “sale” or an “offer for sale” under current law. Nevertheless, a clear understanding of the on-sale bar is necessary to enable entities of all sizes—from single inventors to large corporations—to effectively monitor activities surrounding their inventions, and to enable attorneys to provide such entities with accurate and useful advice.
May 11, 2016
MBHB snippets Alert - May 11, 2016

This afternoon, President Obama signed the Defend Trade Secrets Act of 2016 (“DTSA”) into law, creating a new Federal cause of action for misappropriation of trade secrets. The new law is the most significant expansion of Federal intellectual property law in a generation, and brings with it significant benefits – but also new responsibilities – for intellectual property owners and employers. And in this era of narrowed subject matter eligibility for patenting, the DTSA may provide enough of an incentive for intellectual property owners to keep more information as trade secrets.
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.
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