Holby M. Abern

PartnerIntellectual Property

he / him / his

D (312) 269-8428

F (312) 980-0864

Holby is a trusted intellectual property advisor who helps clients create, develop and protect global patent and trademark portfolios with a business-focused approach. With over 20 years of experience in patent prosecution and trademark development, Holby ensures that client innovations are safeguarded and their brand is protected.

Beyond securing patents, Holby partners with clients early in product development to assess protection needs, evaluate competitive risks, and guide resource allocation. His work spans portfolio strategy, competitive monitoring, and M&A due diligence, with a strong emphasis on fintech and gaming technologies. In the highly regulated fintech space where issues like anti-money laundering compliance are paramount, Holby has managed hundreds of patent applications, helping clients navigate complex regulatory landscapes.

Holby has obtained thousands of patents across diverse industries, including gaming, fintech, renewable energy, offshore drilling, snow grooming and medical technologies. He regularly works with U.S. Patent and Trademark Office Examiners to streamline prosecution, minimize delays and maximize protection for his clients.

Holby is often integrated into his clients’ IP legal teams, where he collaborates seamlessly with in-house counsel, business and product development teams to deliver strategic guidance. As internal counsel, Holby has guided clients through the critical process of converting wide-spanning ideas into focused inventions and then into U.S. patents.

Clients value Holby’s candor, business insight, and commitment to their best interests. He is known for delivering practical, cost-conscious advice, ensuring IP strategies align with long-term business goals. Holby’s proactive measures involve monitoring competitors, tracking industry trends, and timing offensive and defensive IP strategies. His ability to fuse legal expertise with technical and commercial considerations makes him a trusted partner for clients seeking to grow their intellectual property portfolios and/or maximize the value of their intellectual property portfolios.