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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Technical Advisor
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Master Patent Agent
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Senior Patent Agent
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Senior Patent Agent
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Patent Agent
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Senior Patent Agent
P: 312.913.3393
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Master Patent Agent
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Patent Agent
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Patent Agent
P: 312.913.3363
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P: 312.913.3368
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P: 312.913.2138
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Partner
P: 312.913.3390
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P: 312.913.2142
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P: 312.913.2132
F: 312.913.0002

Upcoming Events

February 22, 2017

Past Event

January 19, 2017
MBHB Partners Dr. Michael Borella, Dr. Kevin Noonan and Dr. Donald Zuhn Are Featured Presenters
January 17, 2017
MBHB Partner Kirsten Thomson Is a Featured Presenter
November 15, 2016
November 8, 2016
MBHB Partner Dr. Kevin Noonan Is a Featured Co-Speaker
November 8, 2016
MBHB Partner Kirsten Thomson Is a Featured Presenter

Publications

Fall 2016 (snippets)
The Trans-Pacific Partnership was the latest in a series of multination international agreements aimed at reducing trade barriers and promoting global free trade. However, the subject matter scope of this agreement and the secrecy with which it was negotiated have engendered deep suspicions from a variety of groups regarding whether its goal is truly free trade or whether there are more nefarious motivations behind it. And with the election of Donald Trump, these efforts have apparently amounted to nothing.
Fall 2016 (snippets)
In a highly publicized decision of over a year ago, Judge Swain of the U.S. District Court of the Southern District of New York ruled in favor of the luxury retailer Tiffany and Co., deciding that Costco Wholesale Corp. willfully infringed Tiffany’s trademark. Judge Swain’s initial ruling against Costco allowed Tiffany to take Costco before a jury to seek damages, including recovery of Costco’s profits from the sale of the diamond rings, statutory damages, and punitive damages. After several delays, the jury finally met at the end of September for “Phase I” of the trial during which they decided (1) the amount of Costco’s profits and statutory damages under the Federal Lanham Act, and (2) whether Tiffany was entitled to punitive damages.
Fall 2016 (snippets)
September 16, 2016, marked the fourth anniversary of the effective date for the invalidity proceedings before the Patent Trial and Appeal Board created by the America Invents Act (AIA). These new AIA proceedings, particularly covered business method reviews and inter partes reviews, had an almost immediate impact on litigation defense strategies in the financial services and technology fields. The impact in the bio/pharma field was slower at the beginning, but the number of AIA petitions for review of bio/pharma patents has steadily increased over the past four years.
Fall 2016 (snippets)
Since the Supreme Court decided Alice Corp. v. CLS Bank Int’l in 2014, patent practitioners and the courts alike have struggled to find clarity in the patent eligibility framework of 35 U.S.C. § 101. For the Federal Circuit in particular, applying the two-step framework set forth in Mayo v. Prometheus and Alice with any consistency has proven difficult, as the lines between abstract and non-abstract ideas, between step one and step two of the framework, and between eligibility (§ 101) and patentability (§§ 102, 103, or 112) have grown fainter.
December 6, 2016 (snippets Alert)
MBHB snippets Alert - December 6, 2016

On December 6, 2016, the Supreme Court ruled unanimously, in an opinion by Justice Sotomayor, that an award of total profits for infringing a design patent need not be calculated based only on the end product sold to an ordinary consumer. More particularly, in the case of a multicomponent product, the damages award may be calculated based on subcomponents of the end product. In Samsung v. Apple, the Supreme Court applied this rule to reverse Apple’s $400 million damages award against Samsung.
Summer 2016 (snippets)
By analyzing USPTO data about the number of requests, the pendency of proceedings, and the frequency of finding a substantial new question of patentability (“SNQP”), this article seeks to identify trends that will help patent owners thoughtfully weigh the risks and rewards of supplemental examination.
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