McDonnell Boehnen Hulbert & Berghoff LLP

IAM Research

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Many companies entrust their most important matters to McDonnell Boehnen Hulbert & Berghoff (MBHB), their confidence inspired by its imposing phalanx of eminent trial lawyers. Paul Berghoff, for example, has acted for leading pharmaceutical manufacturers in their competitor battles for many years, with an enviable hit rate at the district court and appellate level to show for it. The same is true of Daniel Boehnen in his focused domains of electrical, mechanical, software, communications, chemical and medical technologies. Both are wise strategists and creative problem solvers who don’t back down when it’s necessary to draw lines in the sand. The firm is in pole position for post-grant action, too, with staunch leadership provided by Grantland Drutchas, whose tactical thinking is elevated by broad experience in litigation, licensing and counselling. Bradley Hulbert also effortlessly crosses over practice area divides; in terms of recent activities, the electrical group chair has developed a substantial portfolio for a multinational tool and diagnostics equipment producer while fending off patent assertion entities, and prosecuted extensively for a top software company. Software is the specialist subject of the commercially minded Michael Borella, whose former stint in corporate management saw him take charge of large groups of software engineers on multiple continents: “Mike engages in strategic patent prosecution with a view to increasing the value of clients’ portfolios, while minimising costs and ensuring no efforts are wasted. His ability to navigate complex issues around Section 101 and give pragmatic, useful advice is highly appreciated – he is a known and published expert in this area. Another interesting aspect of his background is that he is also an inventor.” Kevin Noonan and Donald Zuhn are the widely acclaimed leaders of MBHB’s incredibly well-developed life sciences patent procurement, protection and management practice.

Firm Profile

McDonnell Boehnen Hulbert & Berghoff LLP (MBHB) provides creative, pragmatic business solutions through a variety of IP services, including litigation, prosecution and general client counselling. With offices in Illinois and California, MBHB provides comprehensive legal services to obtain and enforce clients’ IP rights, from navigating patent office procedures to litigating complex infringement actions. MBHB attorneys prosecute patent and trademark applications both in the United States and abroad, handle IP litigation matters in trial and appellate courts across the country, and counsel clients nationwide and worldwide on the enforcement and defence of their IP rights.

MBHB attorneys are experienced in the procurement, licensing, enforcement and defence of patents, trademarks, copyright, trade secrets and unfair competition actions in a number of technological disciplines and product categories, including biotechnology and pharmaceuticals, cannabis, chemical, electrical, mechanical and materials, medical device and diagnostics, software and business methods, and telecommunications.

MBHB devotes almost half of its practice to patent and trademark prosecution and counselling. The firm counsels clients on the management and development of their IP assets and crafts strategies consistent with their business goals. MBHB dedicates the rest of its practice to litigation. The firm is proud to stand at the forefront of legally complex, highly technical patent litigation. This uniquely balanced focus on both prosecution and litigation enables MBHB to approach a client’s needs from multiple perspectives.

MBHB’s greatest resource is its people. Many of its attorneys have both worked and published in their respective industries. MBHB attorneys are admitted to practise law in at least one jurisdiction or are registered to practise before the USPTO.

The MBHB professionals have first-rate legal and scientific credentials; they also speak the languages of law and science – and of the people they serve. All of the firm’s attorneys and technical advisers hold science or engineering degrees. Of these, nearly 50% hold PhDs or other advanced degrees.

Comprising 65 attorneys and 10 technical professionals, MBHB provides effective and service-oriented representation on a case-by-case basis. MBHB attorneys undertake each challenge with a full understanding of the client’s business plan and the ways in which the firm’s services can help each client achieve its goals. Regardless of MBHB’s role, the firm never loses sight of clients’ business objectives. MBHB clients know that they have entrusted knowledgeable, principled professionals who have their best business interests in mind with their legal issues and plans for the future. MBHB’s client list includes Fortune 100 companies, medium-sized companies, start-ups and academic institutions.

MBHB has deep experience in patent filing and a capacity to handle a variety of patent filings, as evidenced in the volume of applications it files – the firm processed 7,103 patent applications (including national phase applications) in 2020 alone, to serve the majority of its clients that are prosecution oriented.

Also in 2020, MBHB assisted with the issuance of 1,445 US patents for firm clients. MBHB has a dedicated prosecution support staff composed of prosecution paralegals, docket clerks, annuities clerks and file clerks, all managed by a highly experienced prosecution staff manager.

MBHB’s singular focus on IP law, coupled with its culture of teamwork, means that clients benefit from the collective knowledge of the entire firm. This growing base of specific knowledge is of tremendous value to clients.

Despite MBHB’s unsurpassed legal and technical skills, the focus of its professionals remains on clear communication – with judges, juries, patent examiners, other lawyers and, most importantly, clients. Collaboration with clients comes easily. MBHB attorneys and technical advisers speak the language of the scientists and inventors with whom they work. They are up to date on today’s ways of thinking regarding science and technology. They are up to speed on current IP law. The result is a positive, spirited firm culture – one that fosters teamwork and enables MBHB’s professionals and staff to be more flexible and efficient in meeting client needs.

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