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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Patent Agent
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Technical Advisor
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Upcoming Events

January 20, 2015
MBHB Attorneys Donald L. Zuhn, Jr., Ph.D., Kevin E. Noonan, Ph.D. and Michael S. Borella, Ph.D. Are the Featured Presenters

Past Event

November 20, 2014
MBHB Partners Alison Baldwin and Rory Shea Are the Featured Presenters
November 19-21, 2014
November 5-6, 2014
MBHB Partners Lisa Schoedel and James Suggs Are Featured Co-Presenters at this Management Forum-Sponsored Conference
October 21, 2014
MBHB Partner Patrick Gattari Is the Featured Presenter
October 20, 2014
MBHB Partner Lisa Schoedel Is the Featured Presenter at this IEEE-Sponsored Program

Publications

Fall 2014 (snippets)
When Congress created the Inter Partes Review (“IPR”) and Covered Business Method (“CBM”) review procedures for challenging the validity of an issued patent, it was intended for these processes to be quicker and more cost-effective than challenging patent validity in the district court system. One of the mechanisms Congress utilized for achieving these objectives was limiting the types of discovery allowed as part of the IPR and CBM processes. This was a lofty goal and pundits questioned whether this restricted scope of discovery could be maintained in practice. With the passage of two years under the IPR and CBM systems, a noticeable trend has emerged regarding how the Patent Trial and Appeal Board is accomplishing these Congressional objectives through its decisions on motions for additional discovery.
Fall 2014 (snippets)
Unlike patents and copyrights, trade secrets have historically been protected primarily under state law rather than federal law. That long history may soon change, as bills to create a federal cause of action for trade secret misappropriation are advancing through both houses of the U.S. Congress. These bills would allow trade secret owners to bring a federal civil action for trade secret misappropriation as long as the trade secret “is related to a product or service used in, or intended for use in, interstate or foreign commerce.” And, for the first time ever, the pending bills have the bipartisan support necessary for passage.
November 17, 2014

Prior to filing a patent application at the United States Patent and Trademark Office (“USPTO”), an applicant seeking patent protection for an invention should consider conducting a prior art search. Also known as a patentability search, a prior art search involves discovering and examining art, such as issued patents, published patent applications, and other published documents, that can affect the potential to obtain a patent on the invention. More exhaustive prior art searches may also include discovering and examining any prior uses or prior sales of technology related to the invention.

Fall 2014 (snippets)
The America Invents Act’s (“AIA’s”) overhaul of the U.S. Patent law system has significantly redefined what constitutes available prior art that can be used to reject patent applications or invalidate patents. In this article, we will discuss how the AIA expanded the definition of prior art, describe the AIA § 102 prior art exceptions, and suggest strategies that practitioners can consider in dealing with prior art and transitional applications.
Summer 2014 (snippets)
The CLS Bank case is the most recent of the Court’s patent eligibility decisions, and the Court unanimously affirmed the Federal Circuit's per curiam opinion (itself an effort to apply the Court’s patent eligibility jurisprudence regarding computer-based methods) that all of Alice’s claims were too abstract to meet the requirements of § 101. The claims at issue included method claims (directed, according to the Court, to methods for implementing an intermediated settlement that are well-known in the art), system claims involving implementation of the method using a general purpose computer, and computer readable-media claims for directing a general purpose computer to implement the method. None of the distinctions thought heretofore to matter between claims to methods, systems, and computer-readable media made any difference to the Court.
Summer 2014 (snippets)
Pandora Media, Inc., (“Pandora”), with over 250 million registered users and over 70% of the market share of Internet radio, is known as a leader in the digital music industry. In 2013 alone, Pandora streamed 16.7 billion hours of music, including stations that featured genres such as “Motown,” “Oldies,” “70s Folk,” and “Classic Rock.” While Pandora streams iconic songs from these genres, Pandora ceased paying royalties on songs recorded before February 15, 1972 (“pre-1972 sound recordings”), which are only protected by state copyright laws. In an effort to recoup unpaid royalties by Pandora, Capitol Records, LLC, among other record companies, sued Pandora under New York state law for copyright infringement, misappropriation, and unfair competition, leaving Pandora potentially liable for millions of dollars in damages. This article provides an overview of the Pandora case and summarizes some of the complexities of copyright protection of pre-1972 sound recordings.
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