Software & Business Methods

Software & Business Methods

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
  • audio/video streaming


At McDonnell Boehnen Hulbert & Berghoff LLP, we work to obtain broad and comprehensive protection for our clients’ intellectual property, enhancing value through the application of our technological and legal expertise. Our practice areas encompass all aspects of intellectual property law – including litigation, prosecution, and counseling; as well as copyright, patent, trade secrets, and trademark, unfair competition and advertising law.

Each of our experienced attorneys is registered to practice before the U.S. Patent and Trademark Office. We negotiate patent licenses and help our clients establish and manage patent portfolios worldwide. Our core technical competency is extensive. Our attorneys have practical industry experience in a number of technological disciplines and product categories including cannabis, biotechnology and pharmaceuticals, chemical, electrical, mechanical and materials, medical device and diagnostics, software and business methods, and telecommunications.

At MBHB, we know high-technology industries, and we know the law. We work with our clients to provide them with the benefit of our extensive knowledge and experience, so that they can rest assured that their technology assets are protected.