MBHB | Services | Biotechnology

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Our biotechnology practice includes such services as patent procurement, interference and opposition practice, litigation - both plaintiff and defense positions, licensing, technology transfer, patent validity and infringement opinions, and other areas of client counseling. Spearheaded by attorneys, agents, and law clerks with advanced degrees in such areas as biochemistry, molecular biology, immunology, and plant sciences, our biotechnology practice has the combination of technical expertise and legal experience that enables us to represent our clients in the most sophisticated arenas.

We work extensively in cutting-edge sub-specialties, such as the production and use of antisense oligonucleotides, ribozymes, recombinant genes and proteins, monoclonal antibodies, gene-gun applications, and pharmaceutical products for disease treatment and diagnosis, apparatuses and techniques for isolating, labeling, and detecting molecules of biological importance. Our focus on the burgeoning field of nanotechnology is one of the most comprehensive in the legal profession. We understand the far-reaching implications of nanotechnology and its potential to transform technology as we now know it.

Our substantial experience extends worldwide and includes strategic development and the protection of intellectual property for Fortune 500 multinational corporations as well as start-up biotechnology companies.

Alison J. Baldwin Partner	P: 312.935.2369 F: 312.913.0002	Download vCard
Paul H. Berghoff Partner	P: 312.913.2140 F: 312.913.0002	Download vCard
Isadora F. Bielsky, Ph.D. Patent Agent	P: 312.913.3357 F: 312.913.0002	Download vCard
Daniel A. Boehnen Partner	P: 312.913.2130 F: 312.913.0002	Download vCard
Joshua D. Bosman, Ph.D. Patent Agent	P: 312.913.2146 F: 312.913.0002	Download vCard
S. Richard Carden Partner	P: 312.913.3330 F: 312.913.0002	Download vCard
Willy Chen Patent Agent	P: 312.935.2351 F: 312.913.0002	Download vCard
James V. DeGiulio, Ph.D. Associate	P: 312.913.2109 F: 312.913.0002	Download vCard
Grantland G. Drutchas Partner	P: 312.913.2121 F: 312.913.0002	Download vCard
Sarah E. Fendrick, Ph.D. Associate	P: 312.913.3369 F: 312.913.0002	Download vCard
Paula S. Fritsch, Ph.D. Partner	P: 312.913.3315 F: 312.913.0002	Download vCard
Patrick G. Gattari Partner	P: 312.913.3333 F: 312.913.0002	Download vCard
Michael S. Greenfield, Ph.D. Partner	P: 312.913.2135 F: 312.913.0002	Download vCard
Nicole E. Grimm Associate	P: 312.913.3366 F: 312.913.0002	Download vCard
James C. Gumina Partner	P: 312.913.2116 F: 312.913.0002	Download vCard
David S. Harper, Ph.D. Partner	P: 312.913.2106 F: 312.913.0002	Download vCard
Lisa M. W. Hillman, Ph.D. Partner	P: 217.239.1962 F: 312.913.0002	Download vCard
Nicole Keenan Partner	P: 312.935.2372 F: 312.913.0002	Download vCard
Jennifer M. Kurcz Partner	P: 312.913.3311 F: 312.913.0002	Download vCard
Nicholas M. Leonard, Ph.D. Patent Agent	P: 312.913.3393 F: 312.913.0002	Download vCard
Jelena Janjic Libby, Ph.D. Patent Agent	P: 312.913.3346 F: 312.913.0002	Download vCard
Michelle L. McMullen-Tack, Ph.D. Partner	P: 312.913.3344 F: 312.913.0002	Download vCard
Kwame N. Mensah, Ph.D. Associate	P: 312.913.2142 F: 312.913.0002	Download vCard
Emily Miao, Ph.D. Partner	P: 312.913.2126 F: 312.913.0002	Download vCard
Kevin E. Noonan, Ph.D. Partner	P: 312.913.2145 F: 312.913.0002	Download vCard
Andrea K. Orth Associate	P: 312.913.3335 F: 312.913.0002	Download vCard
Sherri L. Oslick, Ph.D. Partner	P: 312.913.3349 F: 312.913.0002	Download vCard
Joshua R. Rich Partner	P: 312.913.2133 F: 312.913.0002	Download vCard
Steven J. Sarussi Partner	P: 312.913.2136 F: 312.913.0002	Download vCard
Paul S. Tully, Ph.D. Partner	P: 312.935.2379 F: 312.913.0002	Download vCard
Dmitriy A. Vinarov, Ph.D. Associate	P: 312.913.3368 F: 312.913.0002	Download vCard
Sandra B. Weiss Of Counsel	P: 312.913.3362 F: 312.913.0002	Download vCard
Andrew W. Williams, Ph.D. Partner	P: 312.913.3301 F: 312.913.0002	Download vCard
Erin R. Woelker Associate	P: 312.913.2114 F: 312.913.0002	Download vCard
Donald L. Zuhn, Jr. Ph.D. Partner	P: 312.913.2132 F: 312.913.0002	Download vCard

News

Patent Law Reform Update: Enactment of Leahy-Smith America Invents Act

MBHB Partner Anthoula Pomrening Authors Article Entitled, "Patent Reform — The Leahy-Smith America Invents Act"

MBHB Partner Kevin Noonan Authors Article Entitled, "End of the Road in Sight for Myriad”

MBHB Partner Kevin Noonan Interviewed for PBS NewsHour Segment on Supreme Court Tackling Case of Patent Law, Human Genetics

MBHB Partner Kevin Noonan Interviewed for CBS News Radio Segment on Supreme Court Review of Gene Patent Case

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Upcoming Events

May 30, 2013	Harmonization of USPTO Ethical Standards in the Post-AIA Era (Live Webinar) MBHB Partner Andrew Williams Is the Featured Moderator
June 11, 2013	Preventing Chinese Trade Secret Theft: The Obama Administration’s Strategy on Mitigating the Theft of U.S. Trade Secrets (Live Webinar) MBHB Partner Joshua Rich Is the Featured Presenter

Past Event


May 23-24, 2013	U.S. Patent Practice: What European Patent Attorneys Need to Know MBHB Attorneys James Suggs and Nicole Reifman are Featured Course Leaders for this Management Forum-Sponsored Program
May 17, 2013	Prosecution of EPO and U.S. Patent Applications Based on a Single Specification MBHB Partner Brad Hulbert is a Featured Co-Presenter at this Management Forum-Sponsored Conference
May 16, 2013	Excellence, Integrity & the Ethical Rules (Live Webinar) MBHB Partner James McCarthy Is the Featured Presenter
May 16, 2013	The Impact of Patent Construction -- How to Prove Infringement & Validity in the U.S., UK & Germany MBHB Partner Brad Hulbert is a Featured Co-Presenter at this Management Forum-Sponsored Conference
May 14-16, 2013	Fundamentals of Patent Prosecution 2013: A Boot Camp for Claim Drafting & Amendment Writing MBHB Partners Kevin Noonan and Donald Zuhn are Featured Presenters at this PLI-Sponsored Seminar
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Publications


May 20, 2013 (snippets Alert)	Changes in the Rules for ITC Section 337 Investigations Are Now In Effect On May 20, 2013, new rules of practice and procedure go into effect for International Trade Commission Section 337 Investigations, 19 C.F.R. Parts 201 and 210. Many of these rule changes were made for the purposes of making technical corrections or clarifications to the rules and will have little direct impact upon a complainant or respondent’s strategy in navigating through a Section 337 Investigation. However, some of the changes to the rules, particularly those changes to the rules governing the initiation of an Investigation (§210.12), the termination of an Investigation (§210.21), and the scope of discovery (§210.18), are worthy of attention.
May 14, 2013 (snippets Alert)	U.S. Supreme Court Sides with Monsanto in Seed Patent Case The Supreme Court ruled unanimously May 13, 2013 in favor of Monsanto in Bowman v. Monsanto, a case involving Monsanto’s recombinant, Roundup Ready^® seeds. The opinion rejected the arguments from petitioner, Indiana farmer Vernon Hugh Bowman, that Monsanto’s rights in its seed had been “exhausted” by their first sale (here, to a grain elevator) and that the Court should reject any “special exception” to the first-sale doctrine of patent exhaustion for “self-replicating technologies.”
Spring 2013 (snippets)	Implementing the New Micro Entity Status at the U.S. Patent Office As part of new rules introduced by the Leahy-Smith America Invents Act (AIA), a new section that defines a “micro entity” was added to Title 35 of the United States Code. As a subset of small entity status, micro entity status grants an applicant a seventy-five percent reduction of fees associated with filing, searching, examining, issuing, appealing and maintaining patent applications and patents. The new section sets forth procedures pertaining to claiming micro entity status, paying fees as a micro entity, notifying the United States Patent and Trademark Office (USPTO) of loss of micro entity status, and correcting erroneously paid fees. An applicant has two options for qualifying as a micro entity, which are provided in 35 U.S.C. §§ 123(a) and 123(d) (and implemented in 37 C.F.R. § 1.29). Each is addressed in this article.
Spring 2013 (snippets)	Comments on New AIA Rules On March 16, 2013, the final (and most significant) portion of the Leahy-Smith America Invents Act (AIA) took effect, and the United States broke from a first-to-invent regime to a first-inventor-to-file (FITF) regime. Of course, this break is far from clean as applications filed before March 16, 2013, as well as certain applications filed after March 15, 2013, will continue to enjoy the advantages of the old first-to-invent system. Since the AIA was enacted on September 16, 2011, the U.S. Patent and Trademark Office (USPTO) has played an important role in implementing the new patent law. In the eighteen months between the statute's enactment and the March 16 effective date, the USPTO published twelve notices of proposed rulemaking, issued a patent trial practice guide, and published a guidance document on the FITF provisions of the AIA, all of which culminated in the revision of the rules of practice in title 37 of the Code of Federal Regulations (C.F.R.). Set forth in this article are a few rule revisions that practitioners should pay careful attention to as we proceed into the FITF regime.
Spring 2013 (snippets)	Obama Administration Focuses on Chinese Trade Secret Misappropriation Since President Obama entered the White House in 2009, his administration has undertaken a number of steps toward stricter policing of international trade secret misappropriation. Those efforts reached a turning point early this year with the release of the “Administration Strategy on Mitigating the Theft of U.S. Trade Secrets.” At the same time, however, news reports have suggested that the Chinese government has facilitated – and even been responsible for – the misappropriation of U.S. trade secrets. As a result, the Obama Administration has ramped up efforts to protect trade secrets against Chinese misappropriation.
Spring 2013 (snippets)	Tiffany & Co. v. Costco Wholesale Corp.: Has the TIFFANY trademark become generic? On February 14, 2013, Tiffany filed a lawsuit against Costco Wholesale Corporation (“Costco”), alleging that Costco was engaging in the sale of counterfeit TIFFANY diamond engagement rings. Tiffany’s complaint against Costco alleged violations of federal and New York law, including counterfeiting, trademark infringement, dilution, unfair competition, injury to business reputation, false and deceptive business practices, and false advertising. In its defense and in support of its counterclaims, Costco mainly argued that “[t]he word Tiffany is a generic term for ring settings comprising multiple slender prongs extending upward from a base to hold a single gemstone.” This article reviews the relative strengths/weaknesses of the main arguments presented by the parties and provides an assessment of which party is more likely to prevail based on the strength of these arguments.
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