Startups & Entrepreneurs

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Startup companies and entrepreneurs often face significant risk and liability with respect to Intellectual Property (IP) on their path to success. Intellectual property issues arise regularly in business, particularly with startups companies, and if not addressed, permanent loss of IP rights or exposure to potential litigation may arise. McDonnell Boehnen Hulbert & Berghoff LLP can help maximize opportunities while minimizing risk and liability with respect to IP issues by assisting startup companies and entrepreneurs in avoiding common pitfalls while protecting and enhancing their IP assets.

MBHB attorneys provide creative, pragmatic business solutions through a variety of intellectual property services, including litigation, prosecution, and general client counseling. We routinely counsel startup companies and entrepreneurs in developing strategies to protect their IP assets. Our attorneys are skilled in all aspects of IP prosecution, including drafting patent applications and prosecuting them before the U.S. Patent and Trademark Office and abroad. We assist in the development and selection of trademarks, securing trademark registrations, and establishing appropriate trademark usage for packaging and advertisement. We help startup companies and entrepreneurs in obtaining and maintaining federal copyright registrations. We are skilled in drafting, negotiating, and securing IP rights through agreements, in navigating around competitor IP, and in making companies look attractive to investors by securing IP protection. We are adept in preparing for potential litigation where necessary or avoiding it all together.

At MBHB, we counsel startup companies and entrepreneurs from the initial concept stage on how best to avoid potential IP-related missteps that can jeopardize their viability as a profitable business and limit their appeal as an acquisition or funding target. By helping companies avoid such missteps and protect their IP assets, MBHB enables companies to bring their products to market, raise capital, and resolve IP litigation and disputes that may arise in the course of business.

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Of Counsel
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Partner
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Past Event

June 20, 2017
MBHB Partner Dr. Kevin Noonan Is the Featured Moderator at this BIO 2017 Program
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 9-11, 2017
MBHB Partners Dr. Kevin Noonan and Dr. Donald Zuhn Are Featured Presenters
April 27, 2017
MBHB Partners Grantland Drutchas and Patrick Are Featured Co-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)
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)
What seems evident from Halo, and the cases that have applied it, is that simply proving willful infringement (even when shown by clear and convincing evidence) is not always going to be sufficient to ensure an award of enhanced damages. To support an award of enhanced damages, patentees will now have to establish that the infringer was more than an aggressive competitor that may have played a little too close to another’s patent rights.
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)
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.
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