Holby M. Abern

Partner

Education

  • Loyola University Chicago School of Law (J.D., 2002),

    Certificate in Tax Law, Recipient of multiple CALI Awards

  • University of Illinois at Urbana-Champaign (B.S., 1999),

    Biology

Related Services

Holby is a strategic intellectual property advisor who focuses on the creation, development, protection and enforcement of numerous sophisticated global patent and trademark portfolios. His practice encompasses all aspects of patent and trademark development, including prosecution, licensing, opinion work, counseling and due diligence. Holby provides legal services with a full appreciation of the perspectives of in-house counsel, management and technical staff, routinely advising them regarding patent infringement issues, patent invalidity issues and freedom to operate issues.

He frequently develops patent and trademark portfolio strategies for a broad range of clients relating to sophisticated technologies. In doing so, Holby has obtained thousands of patents across numerous industries throughout his career, such as patents in the gaming industry, the energy industry, the medical industry and countless more. Holby regularly woks directly with U.S. Patent and Trademark Office Examiners to focus prosecution by minimizing delays and maximizing the scope of protection for his clients.

By understanding that navigating complex intellectual property obstacles is impossible when strategies are created inside a vacuum, Holby serves as a partner to the entire business, learning each client’s proprietary technologies inside and out, constantly tracking competitor activities and carefully monitoring trends within each industry to determine the appropriate time to execute an aggressive offensive or defensive strategy. His proactive approach is ideal for confronting unpredictable events and developing adaptive strategies to ensure that his clients’ intellectual property portfolios are well protected.

  • Responsible for more than 2,500 patent applications for a public gaming corporation.
  • Responsible for developing extensive patent portfolio for client’s products to prevent competitors’ infringements in highly competitive industry.
  • Responsible for assisting clients in using client’s pending patent applications to cover actual and proposed competitor products.

Bar Admissions

  • Illinois
  • U.S. Patent and Trademark Office