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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Associate
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Associate
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Patent Agent
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Patent Agent
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Associate
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Technical Advisor
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Associate
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Patent Agent
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Patent Agent
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Of Counsel
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P: 312.913.3329
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Technical Advisor
P: 312.913.3363
F: 312.913.0002
P: 312.913.3368
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P: 312.913.2138
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P: 312.913.2114
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Partner
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Associate
P: 312.913.2142
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P: 312.913.2132
F: 312.913.0002

News

MBHB Partners Kevin Noonan and Donald Zuhn Set to Attend on Behalf of Firm
MBHB Partners Daniel Boehnen and Grantland Drutchas Are Featured Co-Speakers for Case Study Presentation
MBHB Partner Sydney Kokjohn Is a Featured Moderator for One of the Panels
MBHB Partners Kevin Noonan, Ph.D. and Donald Zuhn, Ph.D. Are Featured Presenters

Upcoming Events

September 10-11, 2015
MBHB Partners Joseph Herndon, Bradley Hulbert, Kevin Noonan, Ph.D., Thomas Wettermann and Donald Zuhn, Jr., Ph.D. are Featured Presenters
September 22, 2015
MBHB Partners Kevin E. Noonan, Ph.D. and Andrew W. Williams, Ph.D. Are the Featured Presenters
October 1, 2015
MBHB Partner Dr. Paul Tully Is a Featured Presenter at this ACI-Sponsored Program
December 9, 2015
December 10-11, 2015
MBHB Partner Bradley Hulbert Is a Featured Presenter

Past Event

August 27, 2015
MBHB Partners Grantland G. Drutchas and Dr. Donald L. Zuhn, Jr.., Ph.D. Are the Featured Presenters
July 30, 2015
MBHB Partner James M. McCarthy Is the Featured Presenter
July 20-21, 2015
MBHB Partners Kevin Noonan, Donald Zuhn and Paul Tully Are Featured Presenters
June 26, 2015
MBHB Partner Bradley Hulbert Is a Featured Co-Speaker for a Panel Presentation
June 25-26, 2015
MBHB Partners James Suggs and Nicole Reifman are Featured Course Leaders for this Management Forum-Sponsored Program

Publications

August 14, 2015 (snippets Alert)
MBHB snippets Alert - August 14, 2015

The Federal Circuit issued a unanimous en banc decision yesterday regarding when joint tortfeasors may be held liable for literal infringement in Akamai Technologies Inc. v. Limelight Networks, Inc. In its opinion, the court held that method claims can be literally infringed when individual steps of a claimed method are performed by more than one actor under certain circumstances.
July 22, 2015 (snippets Alert)
MBHB snippets Alert - July 22, 2015

In a seriously fractured decision, the Federal Circuit construed the provisions of the Biologics Price Control and Innovation Act (BPCIA or Act) in Amgen Inc. et al. v. Sandoz Inc. In doing so, the court limited the information available to biologic drug makers regarding a competitor’s application for a biosimilar product (adopting Sandoz’s argument). On the other hand, the decision extended the statutory exclusivity period enjoyed by innovator biologic drug makers relating to when the biosimilar applicant can enter the marketplace (as Amgen argued).
Spring 2015 (snippets)
The recent interpretation of patent eligible subject matter under 35 U.S.C. § 101 by the Supreme Court in Alice v. CLS Bank in June 2014 has caused confusion in the patent world regarding the validity and practicality of software and business method patents. In Alice, the Supreme Court held that claims directed towards a computer-implemented means of mitigating settlement risk by using a third-party intermediary did not qualify as eligible subject matter.
Spring 2015 (snippets)
The patent statute makes it clear that subject matter that would have been obvious to one of ordinary skill in the art as of the effective filing date of a patent application is not patentable. The considerations relevant to obviousness have been set for some time: (1) the scope and content of the prior art; (2) the level of ordinary skill in the art; (3) the differences between the claimed subject matter and the prior art; and (4) secondary considerations of non-obviousness. There has, however, been much litigation on how courts are to apply these considerations to determine whether an invention would have been obvious and therefore not patentable.
Spring 2015 (snippets)
The America Invents Act (AIA) created several adjudicative proceedings within the Patent Trial and Appeal Board (PTAB) of the U.S. Patent & Trademark Office, including inter partes review, post-grant review, and covered business method review (IPR, PGR, and CBM, respectively). The AIA also provided explicit estoppel provisions with respect to District Court litigation for those proceedings.
May 26, 2015 (snippets Alert)
MBHB snippets Alert - May 26, 2015

The Supreme Court issued its decision today in Commil USA, LLC v. Cisco Systems, Inc. In a nutshell, the Supreme Court held that a good faith belief in invalidity (or presumably unenforceability) is no longer a defense against inducement (and presumably contributory infringement).
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