Joseph A. Herndon - Lawyer in Chicago, IL

Joseph A.Herndon is a partner at McDonnell Boehnen Hulbert & Berghoff LLP and chairs the company's Software & Business Methods Practice Group. Herndon has experience in all areas of patent and trademark law practice. Herndon's prosecution experience includes all stages of U.S. and foreign patent and trademark prosecution, client counseling, due diligence, and opinion work on patent validity, infringement, and enforceability. His litigation experience includes all stages of trial work, from plea to verdict.

As part of his patent practice, Herndon has helped clients encourage employee submissions of invention disclosures and establish an internal invention disclosure uptake process and a patent examination committee to identify patentable ideas. In this regard, Ms. Herndon has led dozens of invention harvesting sessions with engineers, other inventors, and in-house patent advisors. In addition, we regularly give presentations on patent law, inform our engineers of the patent application process, and identify patent applications that engineers should pay attention to during their research and development activities.

Herndon represented Fortune 500 companies across a wide range of technologies, drafting more than 650 patent applications across a wide range of software, electrical, and mechanical fields. Herndon's technical experience in the computer hardware and software fields has led him to focus on communications, mobile Internet platforms and mobile applications. 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, robot control, geophysical exploration, Internet games, digital maps and vehicle navigation, music discovery and computer science, It is related to content identification, 3D object data modeling, sensor fusion algorithms, and aerospace technology.

Examples of Ms. Herndon's technical experience in the mechanical and materials fields include automotive lighting and diagnostics, orthopaedics and medical implants, medical devices, batteries, kinematic robotic design, and other fields.

Herndon also represents universities and individual inventors in terms of software, business methods, and financial planning activities.

At Mbhb, he has been the editor-in-chief of Mbhb's snippets® newsletter for many years and is a separate member of Mbhb's Patent Examination Group Committee.

Herndon joined MBHB as a technical advisor/patent agent, preparing and prosecuting patent applications. He attended law school evening classes while maintaining his full-time position in the company.

Prior to joining MBHB, he worked for a power company, where he gained expertise in power electronics, energy allocation and planning, and energy systems.

He also teaches intellectual property law classes at Chicago Kent College of Law and Northwestern University, and is a featured presenter of the PRACTISING Law Institute (PLI) Patent Examination workshop.