FacultyFaculty/Author Profile
Joseph A. Herndon

Joseph A. Herndon

McDonnell Boehnen Hulbert & Berghoff LLP

Chicago, IL, USA

Joseph A. Herndon is a partner with McDonnell Boehnen Hulbert & Berghoff LLP. 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 350 patent applications in a wide variety of 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, computer architecture design, aerospace/automation and control, semiconductors, consumer electronics, robotic controls, geophysical prospecting, digital map and vehicle navigation, music discovery and content identification, and sensor fusion algorithms. 

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.

Representative Experience
• 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.
• Managing worldwide patent prosecution portfolio for company in software, electronics, and mechanical products.
• Organizing invention disclosure intake process and patent review board for new company, and meeting with engineers to learn of research and identify patentable ideas.
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 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.
Joseph A. Herndon is associated with the following items:
CHB Chapters  CHB Chapters Patent Prosecution Practice in USPTO - Advanced Patent Prosecution Workshop 2017: Claim Drafting & Amendment Writing, Thursday, September 14, 2017

  • twitter
  • LinkedIn
  • YouTube
  • RSS

All Contents Copyright © 1996-2018 Practising Law Institute. Continuing Legal Education since 1933.

© 2018 PLI PRACTISING LAW INSTITUTE. All rights reserved. The PLI logo is a service mark of PLI.