Software & Business Methods

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Software is no longer just a tool of science and engineering. It is ubiquitous and necessary in virtually every field of endeavor, from telecommunications, robotics, bioinformatics, and gaming to e-commerce, marketing, and banking.

Expertise in Software and Business

In addition to having graduate and Ph.D. level technical backgrounds in computer science, electrical and computer engineering, mathematics, physics, business, finance, management, and other related fields, many of our attorneys have years of practical experience in the engineering and management fields. As a firm, we have vast industry experience with software at all levels, from low-level machine code to high-level code that runs Internet-based technologies, engineering, database, and financial systems. Our attorneys have been managers, executives, and have run their own businesses.

As a result, MBHB approaches patent law from the perspective of clients.

Wide Recognition

Additionally, we are internationally recognized as experts in the field of software and business method patents. Our attorneys have written numerous articles on these subjects, as well as hosted webinars and presented at conferences organized by legal associations, business organizations, and academic institutions. Not only do we practice the law, but we help other attorneys and business managers improve their practices.

Our Practice

We conduct patent searching, prosecution, opinion work, litigation, licensing, and various types of post-grant procedures including Post-Grant Reviews (PGR), Inter Partes Reviews (IPRs) and Covered Business Method (CBM) reviews. We also have expertise in software licenses, trademarks, copyrights, and trade secret issues.

As a result, when evaluating our clients’ intellectual property, we consider factors such as software development speed and version update timeline, ease of copying, ease of identifying infringers, and changes in industry trends with respect to use of software. We advise our clients on how to best protect their software through patents, copyrights, and trade secrets, and we guide our clients around existing intellectual property owned by others. In addition, we assist our clients’ efforts to monetize their investments by negotiating and drafting licensing and technology transfer agreements.

Ahead of the Curve

Following the U.S. Supreme Court’s Alice Corp. v. CLS Bank International (2014) decision, the patentable subject matter requirements for software and business methods have changed. Our strategies for protecting our clients’ software and business method inventions have evolved accordingly. But rather than merely reacting to changes in the law, we employ foresight so that our techniques result in patents that will be enforceable not just on the day of issuance, but years down the road as well.

Specific Experience

Our attorneys have drafted patent applications and represented clients in litigation involving telecommunications, mobile applications, machine learning, location-based services, web-based services, image processing, data compression, real-time operating systems, graphical user interfaces, databases, gaming, compression, encryption and security, microprocessor design, programming languages, insurance products, annuities, customized investing, diagnostic methods, remote monitoring, robotics, medical informatics, online marketing, voice over IP, and audio/video streaming.

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Master Patent Agent
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Patent Agent
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Senior Patent Agent
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Of Counsel
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Patent Agent
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Partner
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Upcoming Events

July 25, 2017

Past Event

June 19, 2017
MBHB attorney Aaron Gin, Ph.D. is the Featured Presenter at this MATTER Sponsored Workshop
May 24, 2017
MBHB Partner Kevin Noonan, Ph.D. Is the Featured Speaker
May 17-18, 2017
MBHB Partner Bradley Hulbert Is a Featured Presenter
May 16, 2017
May 9-11, 2017
MBHB Partners Dr. Kevin Noonan and Dr. Donald Zuhn Are Featured Presenters

Publications

June 19, 2017 (snippets Alert)

This morning, in Matal v. Tam, previously Lee v. Tam, the Supreme Court handed down its most impactful interpretation of the disparagement clause of the Lanham Act to date by holding that at its intersection with the First Amendment, the disparagement clause violates the First Amendment’s Free Speech Clause.  

June 12, 2017 (snippets Alert)
Today, in Oil States Energy Services v. Greene’s Energy Grp., LLC, Case No. 16-712, the Supreme Court accepted certiorari on the question of whether the IPR regime set out by Congress in the AIA is constitutional. At issue is whether, once patents are issued, the resulting patent rights are a “public right,” in which case their validity can be resolved by an agency, or a “private property right,” in which case the validity issues must be addressed by Article III courts and arguably subject to the Seventh Amendment’s right to trial by jury.
Spring 2017 (snippets)
Data analytics services now provide patent practitioners the ability to easily determine tendencies of patent examiners, which allows them to amend their prosecution strategies accordingly. This article focuses on the information provided by such services, and provides three particular scenarios where examiner-specific analytics can be used to update prosecution strategy.
Spring 2017 (snippets)
Recently, the Supreme Court delivered a rare victory for many intellectual property (IP) owners in its recent decision: Star Athletica, L.L.C. v. Varsity Brands, Inc. Here, we attempt to unpack what little clear, practical guidance may be garnered from this decision.
Spring 2017 (snippets)
In part because of RCE and Appeal backlogs, the USPTO has introduced several post-examination programs to speed-up patent prosecution, increase collaboration between examiners and applicants, and reduce the number of RCE and Appeal filings. In this paper, we discuss several procedural options available to applicants after receiving a final rejection, advantages/disadvantages of each option, and conclude with suggestions on how to select the best option depending on the situation.
Spring 2017 (snippets)
Counterfeiting is not a problem limited to items such as luxury handbags or designer sunglasses, but one that extends to many industries—from pharmaceuticals to automotive parts, consumer electronics to cosmetics, computers to personal care products. Thus, the problems imposed on society by counterfeiting are far-reaching, and, according to recent studies, only growing.
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