Kevin E. Noonan, Ph.D.

Partner
P: 312.913.2145
F: 312.913.0002

Kevin E. Noonan is a partner with McDonnell Boehnen Hulbert & Berghoff LLP and serves as Chair of the firm's Biotechnology & Pharmaceuticals Practice Group. An experienced biotechnology patent lawyer, Dr. Noonan brings more than 20 years of extensive work as a molecular biologist studying high-technology problems in serving the unique needs of his clients. His practice involves all aspects of patent prosecution, interferences, and litigation. He represents pharmaceutical companies both large and small on a myriad of issues, as well as several universities in both patenting and licensing to outside investors. He has also filed amicus briefs in landmark patent and other cases to district courts, the Federal Circuit and the U.S. Supreme Court involving patenting issues relevant to biotechnology.

Dr. Noonan is a frequent speaker, commentator and author on a variety of intellectual property law topics. He is a founding author of the Patent Docs weblog, a site focusing on biotechnology and pharmaceutical patent law. In 2010, he was interviewed for a segment that aired on the television program "60 Minutes" that addressed the issue of gene patenting.

Published Articles

Founding author of the Patent Docs weblog, a site focusing on biotechnology and pharmaceutical patent law.

“Personalized Medicine and Patient Privacy Concerns in the Telemedicine Age,” DePaul Journal of Health Care Law, 2018, Vol. 19, Issue 13

“What’s in a Name: The FDA Tries to Decide Regarding Biosimilars,” Pharmaceutical Compliance Monitor, December 23, 2015

Contributing author, Regenerative Medicine Ethics: Governing Research and Knowledge Practices (Hogan, L., ed), Springer Press 2014

Contributing author, Claim Construction and the Federal Circuit, (The Intellectual Property Law Association of Chicago Litigation Committee, Manzo, E., ed.), West Publishing Co., 2007-2017

Contributing author, Gene Patents and Personalized Cancer Care: Impact of the Myriad Case on Clinical Oncology, Journal of Clinical Oncology, July 20, 2013, Vol. 31 No. 21: 2743-2748

"The latest on the gene patenting case Association for Molecular Pathology v. Myriad Genetics," Westlaw Journal Intellectual Property, October 31, 2012, Vol. 19, Issue 14

Contributing author, Annual Review of Intellectual Property Law Developments 2010, (ABA Section on Intellectual Property Law, Thomas, L., ed), American Bar Association Press, (multiple years)

"An antidote to the politics of the human gene patenting debate,” SCOTUS blog, February 6, 2013

"The Supreme Court's Prometheus Decision and Its Meaning for Diagnostic Method Claims," Biotechnology Law Report, June 2012, Vol. 31, No. 3: 267-270

"Federal Trade Commission Rejected in 'Reverse Payment' Suit," CPI Antitrust Chronicle, June 2012 (2)

“FDA Issues Draft Guidelines for ‘Follow-on’ Biologic Drug Approval Pathway,” Pharmaceutical Compliance Monitor, April 9, 2012

"Supreme Court Sets Limits on the Bayh-Dole Act in Stanford v. Roche", BNA Life Science Law and Industry Report, July 1, 2011, p.1-3

"Little Light Shed on Method Claims Patent-Eligibility in Assoc. Medical Pathol. v. U.S. PTO", BNA Life Science Law and Industry Report, in press

"Round One Goes to the ACLU: Association of Molecular Pathologists v. Myriad Genetics", BNA Life Science Law and Industry Report, May 2010

"Biotechnology Patenting: What You Need to Know", BioLogical Quarterly, Winter/Spring 2010.

"Worldwatch Intellectual Property: Gene Patenting", Financier Worldwide, October 2009.

"Worldwide Pharmaceutical Drug Pricing and Patent Rights: A Recipe for Disaster?", Financier Worldwide, September 2009.

Kevin E. Noonan, Michael S. Greenfield, and Donald L. Zuhn, "Paradise Lost: The Uncertain Future of Research Tool Patents", Intellectual Property & Technology Law Journal, March 2003

Memberships

DePaul University College of Law
  • Adjunct Professor, Biotechnology Patent Law

The John Marshall Law School
  • Adjunct Professor

IIT Chicago-Kent College of Law
  • Adjunct Professor 
     

Distinctions

Best Lawyers in America (2007-2019 editions)

Best Lawyers in America 2017 and 2013 Chicago "Lawyer of the Year" in "Biotechnology Law"

IAM Patent 1000 (2013-2016 editions)

IAM Strategy 300 -- The World's Leading IP Strategists (2017-2018 editions)

Managing IP Stars (2018)

JD Supra Readers’ Choice Awards (2016-2018 editions)

LMG Life Sciences 2012

Upcoming Events

September 27-28, 2018
MBHB Partners Lawrence Aaronson, Joseph Herndon, Kevin Noonan, Ph.D., Thomas Wettermann and Donald Zuhn, Jr., Ph.D. are featured presenters.
October 1, 2018

Past Events

August 23, 2018
MBHB Partner Kevin Noonan, Ph.D. is the Featured Presenter
May 22, 2018
MBHB attorneys Kevin Noonan, Ph.D., James Lovsin, and George "Trey" Lyons, III are the featured presenters
May 8-10, 2018
MBHB Partners Dr. Kevin Noonan and Dr. Donald Zuhn Are Featured Presenters
January 17, 2018
MBHB Partners Michael Borella, Ph.D., Kevin Noonan, Ph.D., and Donald Zuhn, Jr., Ph.D., Are Featured Presenters
September 26, 2017
MBHB Partner Kevin Noonan, Ph.D. Featured Speaker at this IPO-Sponsored Webinar

Publications

September 11, 2018

MBHB snippets Alert - September 11, 2018

On Monday, the Federal Circuit handed down its decision in the University of California’s (“California”) appeal of the decision by the Patent Trial and Appeal Board (“the Board”) that there is no interference-in-fact between California’s pending application and twelve patents (and one pending application) assigned to The Broad Institute (“the Broad”) claiming reagents and methods for using CRISPR-Cas9 in eukaryotic cells.

July 20, 2018 (snippets Alert)
The Federal Circuit issued its decision today in St. Regis Mohawk Tribe v. Mylan Pharmaceuticals, Inc. affirming the decision by the Patent Trial and Appeal Board (PTAB) of the U.S. Patent and Trademark Office that denied the Tribe’s motion to dismiss Mylan’s inter partes review (IPR) proceedings as being barred by tribal sovereign immunity.
April 24, 2018 (snippets Alert)
MBHB snippets Alert - April 24, 2018

The Supreme Court reversed the judgment of the Federal Circuit today in SAS Institute Inc. v. Iancu. In a rare close decision in patent cases, Justice Gorsuch (joined by the Chief Justice and Justices Kennedy, Thomas, and Alito) provided a textual explication of the inter partes review statute in deciding that the USPTO was compelled to render a Final Written Decision (FWD) on all claims challenged by a petitioner in its IPR petition. This decision overruled the Patent Office’s practice by rule that the Director (through the Patent Trial and Appeal Board) could institute an IPR on less than all challenged claims and then limit the FWD to only the instituted claims. According to the majority, the decision to institute is binary (either the PTAB decides to institute or not) but once instituted the Board must render a decision on all challenged claims. Because the majority saw no ambiguity in the statutory language, deference to the agency’s implementation decisions under Chevron v. Natural Resources Defense Council did not apply.

Fall 2017 (snippets)
The U.S. Supreme Court at the end of the past term handed down a decision, Impression Products, Inc. v. Lexmark International, Inc., that greatly expanded the doctrine of patent exhaustion.
June 12, 2017 (snippets Alert)
The Supreme Court handed down its opinion in Sandoz Inc. v. Amgen Inc., marking the first time the Court has interpreted the Biologics Price Competition and Innovation Act (“BPCIA”) for the approval of biosimilar drugs. On the first question considered, the Court held that a biologic reference product sponsor (“RPS”) cannot seek enforcement of 42 U.S.C. §262(l)(2)(A) by injunction under federal law. The Court’s analysis of the second question, regarding the 180-day notice provisions of the statute, was more straightforward. The Court held that the Federal Circuit had misinterpreted the statutory language by imposing a requirement for FDA approval before proper notice could be given.
May 31, 2017 (snippets Alert)
The Supreme Court handed down its opinion in Impression Products v. Lexmark yesterday, reversing the Court of Appeals for the Federal Circuit regarding the scope of the patent exhaustion doctrine. The Court held that patent rights are exhausted completely for an authorized sale of a patented article to a purchaser, whether in the U.S. or abroad, and that a patentee cannot lawfully restrict the purchaser’s rights by asserting patent infringement.
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