Joseph A. Herndon


Joseph A. Herndon is a partner with McDonnell Boehnen Hulbert & Berghoff LLP and serves as Chair of the firm’s Software & Business Methods Practice Group. Mr. Herndon has experience in all areas of patent and trademark law practice. Mr. Herndon’s prosecution experience includes all phases of U.S. and foreign patent and trademark prosecution, client counseling, due diligence, and opinion work regarding validity, infringement, and enforceability of patents. His litigation experience includes all phases of trial work, from pleadings to verdict.

As part of his patent practice, Mr. Herndon has helped clients establish an internal invention disclosure intake process and patent review board for incentivizing employee submissions of invention disclosures, and for identifying patentable ideas. In this respect, Mr. Herndon has led dozens of invention harvesting sessions with engineers, other inventors, and in-house patent counsel. He also regularly gives presentations on patent law to inform engineers of the patent application process, and to educate and generate interest in patents for engineers to keep in mind during research and development activities.

Mr. Herndon represents Fortune 500 companies that span a diverse range of technologies, and has helped clients pursue patent rights by drafting well over 650 patent applications in a wide variety of software, electrical, and mechanical disciplines. Examples of Mr. Herndon’s technical experience in the computer hardware and software fields relate to telecommunications, mobile Internet platforms and mobile device operating systems, computer networking, software as-a-service (SaaS) and platform as-a-service (PaaS), computer architecture design, aerospace/automation and control, semiconductors, consumer electronics, robotic controls, geophysical prospecting, Internet gaming, digital map and vehicle navigation, music discovery and content identification, 3D object data modeling, sensor fusion algorithms, and aerospace technology.

Examples of Mr. Herndon’s technical experience in the mechanical and materials fields relate to automotive lighting and diagnostics, orthopaedics and medical implants, medical devices, batteries, kinematic robotic designs, and aircraft rotor design and operation.

Mr. Herndon also represents universities and individual inventors with respect to software, business methods, and financial planning activities.

At MBHB, Mr. Herndon has served as the editor-in-chief of MBHB’s snippets® newsletter for a number of years, and separately serves on the firm’s Patent Prosecution Group Committee.

Mr. Herndon joined MBHB as a technical advisor/patent agent, and prepared and prosecuted patent applications. He attended law school evening classes while maintaining his full-time position at the firm.

Prior to joining MBHB, Mr. Herndon worked for an electric utility provider where he gained expertise in power electronics, energy distribution and planning, and energy systems.

Mr. Herndon is a frequent lecturer and author on intellectual property matters, and has taught classes in intellectual property law at Chicago-Kent College of Law and Northwestern University, as well as participates as a featured presenter for Practising Law Institute (PLI) Patent Prosecution Workshops.

  • J.D., DePaul University College of Law,

    Summa Cum Laude

  • B.S., University of Illinois at Urbana-Champaign,

    Electrical Engineering, With Honors

Bar Admissions
  • Illinois ,
  • California ,
  • U.S. Patent & Trademark Office ,
  • IPO Patent Office Practice Committee
    • Member
  • Professional Engineering
  • Intern License, State of Illinois
  • Northwestern University School of Engineering
    • Adjunct Professor, Engineering Law
  • University of Notre Dame
    • Adjunct Faculty for Patent Law & Prosecution II


  • Successfully preparing and prosecuting patent applications for large cellular wireless communications corporation.
  • Handling complex patent prosecution portfolio for large music discovery service provider.
  • Managing patent prosecution portfolio for large consumer robotics developer.
  • Working with surgeons to take innovative prototypes to the market, and advising on intellectual property protection throughout the process.
  • Managing worldwide patent prosecution portfolio for company in software, electronics, and mechanical products.
  • Managing U.S. patent prosecution portfolio for company in aerospace technology.
  • Organizing invention disclosure intake process and patent review board for new company, and meeting with engineers to learn of research and identify patentable ideas.
  • Working with software company to assist with patent acquisition and IP portfolio growth.