Brinks Gilson & Lione shareholder named a Top Lawyer by DBusiness Magazine

James Cleland, a shareholder in the Ann Arbor office of Brinks Gilson & Lione, one of the largest intellectual property law firms in the U.S., has been named a 2017 Top Lawyer by the Detroit business publication, DBusiness Magazine. The Top Lawyer list appears in the publication’s Nov./Dec. 2016 issue.

For the 2017 Top Lawyer peer review survey, DBusiness polled 19,000 attorneys in Wayne, Oakland, Macomb, Washtenaw and Livingston counties. Each attorney was asked to nominate lawyers among 48 legal specialties. Cleland was noted in the category of trade secrets.

Cleland closely followed the progress of the Defend Trade Secrets Act, which became law in April 2016. At that time, he looked at the impact of the act on Michigan businesses. At Brinks, his practice focuses on patent, trademark, copyright, trade secret and unfair competition litigation in a broad range of technologies including the chemical, automotive, materials science, mechanical, electrical and medical device arts, as well as in client counseling, opinion and licensing work in those same areas.

Cleland’s litigation experience includes trials, preliminary injunction hearings, Markman hearings, summary judgment proceedings and all aspects of fact and expert witness discovery, spanning federal courts across the country. He also focuses on post-grant review proceedings before the Patent Trial and Appeal Board, a forum that is quickly becoming the busiest patent court in the country. He is a member of the Legal Task Force of the Sports & Fitness Industry Association (SFIA).

Cleland holds a J.D., cum laude, from the Indiana University Maurer School of Law and a B.S. in Chemical Engineering, cum laude, from the University of Michigan.

Brinks Gilson & Lione

The attorneys, scientific advisors and patent agents at Brinks Gilson & Lione focus their practice in the field of intellectual property. Brinks is one of the largest intellectual property law firms in the U.S. Clients around the world use Brinks to help them protect and enforce their intellectual property rights. Brinks lawyers provide counseling in all aspects of patent, trademark, unfair competition, trade secret and copyright law.

For more information visit:  www.brinksgilson.com.

Best Law Firms Ranks Brinks Gilson & Lione in Highest Tier in Patent, Trademark Law; Ann Arbor gets Nod for Patent Law

Brinks Gilson & Lione, one of the largest intellectual property law firms in the United States, has again been recognized as a top-tier law firm by U.S. News and World Report and Best Lawyers in their 2017 “Best Law Firms” list.

In the seventh annual edition of “Best Law Firms,” Brinks is ranked nationally in Tier 1, the highest level, in the category of Patent Law for the seventh year in a row, and in the category of Trademark Law for the fifth year in a row. Individual Brinks offices received top rankings at the metropolitan level, which encompasses 185 major U.S. markets. In Michigan, Brinks’ Ann Arbor office was ranked in Tier 1 in Patent Law.

The U.S. News–Best Lawyers “Best Law Firms” rankings are based on a rigorous evaluation process that includes the collection of client and lawyer feedback, peer review from leading attorneys, and review of additional information provided by law firms as part of the formal submission process.

To be eligible to participate in “Best Law Firms,” a firm must have at least one attorney who has received peer-review high enough to be listed in the current edition of Best Lawyers in America. For 2017, fifteen Brinks attorneys were honored with that designation.

The 2017 “Best Law Firms” rankings are available at http://bestlawfirms.usnews.com/.

Brinks Gilson & Lione

The attorneys, scientific advisors and patent agents at Brinks Gilson & Lione focus their practice in the field of intellectual property. Brinks is one of the largest intellectual property law firms in the U.S. Clients around the world use Brinks to help them protect and enforce their intellectual property rights. Brinks lawyers provide counseling in all aspects of patent, trademark, unfair competition, trade secret and copyright law.

More information is at www.brinksgilson.com.

Brinks Gilson & Lione attorney to attend Licensing Executives Society (LES) Annual Meeting in Vancouver, BC

Brinks Gilson & Lione attorney to attend Licensing Executives Society (LES) Annual Meeting in Vancouver, BC

Michael N. Spink, an intellectual property attorney and shareholder in the Ann Arbor office of Brinks Gilson & Lione, one of the largest intellectual property law firms in the U.S., will attend the Licensing Executives Society (LES) annual meeting in Vancouver, British Columbia from Oct. 23 to 26. The Licensing Executives Society is a professional society comprised of nearly 3,000 members engaged in the transfer, use, development, manufacture and marketing of intellectual property. Spink is co-chair of the Michigan Chapter of LES.

About LES USA and Canada
Established in 1956, LES (USA and Canada) is a professional society of nearly 3,000 members engaged in the creation, commercial development and orderly transfer of intellectual property. LES is a member society of the Licensing Executives Society International, Inc. (LESI), which has more than 10,000 members world-wide.

To learn about LES and the annual meeting, visit the LES website.

Brinks Gilson & Lione
The attorneys, scientific advisors and patent agents at Brinks Gilson & Lione focus their practice in the field of intellectual property. Brinks is one of the largest intellectual property law firms in the U.S. Clients around the world use Brinks to help them protect and enforce their intellectual property rights. Brinks lawyers provide counseling in all aspects of patent, trademark, unfair competition, trade secret and copyright law.

More information is at www.brinksgilson.com.

Brinks Gilson & Lione attorney to serve as guest lecturer on drafting patent applications for Wayne State University Law School class

Linda Nattler, an IP attorney with the Ann Arbor office of Brinks Gilson & Lione, one of the largest intellectual property law firms in the U.S., has been invited to serve as the guest lecturer at the Wayne State University Law School on Nov. 3. Her topic is “Drafting Patent Applications that Comply with European Disclosure Requirements.” The guest lecture will be presented to law students enrolled in the patent drafting class.

A German native, Nattler focuses her intellectual property law practice on patent prosecution and IP portfolio management, with a particular emphasis on the areas of mechanics, electronics, hydraulics and computerized processes. Prior to joining Brinks, Nattler gathered extensive experience in U.S., European and German patent prosecution. While employed in Europe, she was admitted to practice before the European Patent Office and is one of very few U.S. attorneys admitted to practice before both the European Patent Office and U.S. Patent and Trademark Office. Nattler attended Thomas Cooley Law School on a full academic scholarship and graduated magna cum laude. She holds an undergraduate degree in physics from Universität Bayreuth in Germany.

Brinks Gilson & Lione

The attorneys, scientific advisors and patent agents at Brinks Gilson & Lione focus their practice in the field of intellectual property. Brinks is one of the largest intellectual property law firms in the U.S. Clients around the world use Brinks to help them protect and enforce their intellectual property rights. Brinks lawyers provide counseling in all aspects of patent, trademark, unfair competition, trade secret and copyright law. More information is at www.brinksgilson.com.

Brinks attorney to lead panel discussion at Medical Design & Manufacturing conference

Keith Weiss, Ph.D., an intellectual property attorney in the Ann Arbor office of Brinks Gilson & Lione, one of the largest intellectual property law firms in the U.S., will serve as the moderator of a panel discussion on 3-D printing and medical devices at the 2016 Medical Design & Manufacturing (MD&M) Conference & Expo: Creating the Total Solution – Value Engineering to Deliver Clinical & Economic Outcomes. The event will take place in Minneapolis on Sept. 21-22 with an expected 5,000 industry professionals in attendance.

Medical Design & Manufacturing Minneapolis has been the epicenter of the region’s medtech innovation, communication and solutions for the past 22 years. On Sept. 22, Dr. Weiss will facilitate a panel discussion on “Answering the Key Question: Can 3-D Printing Really Be Used to Make Medical Devices?” The panel discussion will cover crucial topics such as exploring ways to integrate new materials and processes in design progression; balancing design considerations with manufacturing necessities; and addressing issues of repeatability, reliability and consistency.

At Brinks, Dr. Weiss focuses his practice on patent prosecution and intellectual property agreements with an emphasis on IP portfolio planning, development and management. Prior to practicing law, he worked for 20 years in R & D management, product development, and technology licensing. Dr. Weiss is listed as an inventor on more than 30 U.S. patents and four pending U.S. patent applications regarding advanced materials, components and systems used in the automotive, aerospace, coatings, plastics, and microelectronic industries.
Learn more about the 2016 MD&M Minneapolis Conference & Expo here.

Brinks Gilson & Lione
The attorneys, scientific advisors and patent agents at Brinks Gilson & Lione focus their practice in the field of intellectual property. Brinks is one of the largest intellectual property law firms in the U.S. Clients around the world use Brinks to help them protect and enforce their intellectual property rights. Brinks lawyers provide counseling in all aspects of patent, trademark, unfair competition, trade secret and copyright law. More information is at www.brinksgilson.com.

Brinks attorney serves as contributing author on new intellectual property law publication

Keith Weiss, Ph.D., an intellectual property attorney in the Ann Arbor office of Brinks Gilson & Lione, one of the largest intellectual property law firms in the U.S., served as a contributing author to the Illinois Institute for Continuing Legal Education’s new publication, Intellectual Property Law – 2016 Edition. Dr. Weiss, who is listed as an inventor on 30 U.S. patents and four pending U.S. patent applications regarding advanced materials, components and systems used in the automotive, aerospace, coatings, plastics, and microelectronic industries, co-authored the publication chapter on patenting inventions, along with Brinks colleague, Marc Richards. Richards is an intellectual property attorney in the Chicago office of Brinks.

At Brinks, Dr. Weiss focuses his practice on patent prosecution and intellectual property agreements with an emphasis on IP portfolio planning, development, and management. Prior to practicing law, he worked for 20 years in R & D management, product development, and technology licensing.

Brinks Gilson & Lione
The attorneys, scientific advisors and patent agents at Brinks Gilson & Lione focus their practice in the field of intellectual property. Brinks is one of the largest intellectual property law firms in the U.S. Clients around the world use Brinks to help them protect and enforce their intellectual property rights. Brinks lawyers provide counseling in all aspects of patent, trademark, unfair competition, trade secret and copyright law. More information is at www.brinksgilson.com.

Brinks Gilson & Lione attorney discusses 6 steps of Intellectual Asset Management (IAM)

As the ongoing patent wars between Apple and Android will attest, managing and protecting intellectual property while gauging the competition is an increasingly sophisticated and complex operation. Keith D. Weiss, Ph.D., an IP attorney with the Ann Arbor office of Brinks Gilson & Lione, one of the largest intellectual property law firms in the U.S., advises businesses to incorporate intellectual asset management (IAM) into their corporate business strategy in order to leverage innovation and generate revenue.

“It’s not limited to corporate behemoths. Establishing a comprehensive intellectual asset management process is important to corporations of all sizes, but it can be a tough proposition,” Weiss said. “The key challenges are managing costs, establishing portfolios and leveraging value. Corporations want to monetize their existing IP, manage their IP portfolios and protect or enforce their IP rights, but need to have a plan to do so.”

Weiss says intellectual asset management begins with innovation, awareness and continual improvement, but is really a six-pronged, on-going process that involves:

1. Setting technology and IP goals by defining an IP asset policy and creating an innovative culture;

2. Creating IP assets by confirming ownership through the establishment of proper invention disclosure review, employee/contractor agreements and trade secret policies and procedures;

3. Protecting IP assets by establishing an IP portfolio that comprises one or more patents, trademarks and/or trade secrets;

4. Reducing liability and limiting exposure by setting and meeting confidentiality obligations, establishing freedom to operate, implementing document retention and conducting on-going employee training;

5. Leveraging IP assets by establishing a technology licensing process, obtaining competitive intelligence, performing infringement analyses and/or fostering joint development relationships; and

6. Auditing IP assets by performing due diligence, analyzing the strength/weakness of the IP portfolio, monitoring metrics, pursuing litigation or implementing tax strategies.

With the cost of a global patent family that includes patents issued in only five jurisdictions running approximately $166,500 over a 20-year period, Weiss recommends companies periodically review their existing portfolios in view of:

• Evolving business goals (core vs. non-core)
• Multi-generation product plan with respect to coverage and gaps
• Market trends and customer needs
• Introduction of competitive products
• New technology developments vs. obsolescence
• Changes in regulations or court decisions
• Budget costs with recognition of value added functionality

“A periodic evaluation of an IP portfolio will help companies determine what portion of their portfolio they should (a) maintain and enforce, (b) license or sell, and (c) abandon altogether,” Weiss said.

Brinks Gilson & Lione
The attorneys, scientific advisors and patent agents at Brinks Gilson & Lione focus their practice in the field of intellectual property. Brinks is one of the largest intellectual property law firms in the U.S. Clients around the world use Brinks to help them protect and enforce their intellectual property rights. Brinks lawyers provide counseling in all aspects of patent, trademark, unfair competition, trade secret and copyright law.

More information is at www.brinksgilson.com.

 

Brinks Gilson & Lione Attorney Leads Webinar on Preparing a Patent Disclosure for Prosecution Before the EPO

Linda Nattler, an IP attorney with the Ann Arbor office of Brinks Gilson & Lione, one of the largest intellectual property law firms in the U.S., conducted a webinar on June 28, 2016 entitled Preparing a Patent Disclosure for Efficient and Effective Prosecution Before the European Patent Office (EPO). The webinar launched the firm’s new series, Transatlantic Synergy: Drafting Patent Applications to Comply with Both the USPTO and the EPO Practice.

Patent applications drafted outside of Europe are sometimes difficult to prosecute before the EPO because claim amendments must pass a much stricter disclosure standard than in many other countries. Even if claims result in a granted patent, opposition proceedings before the EPO may lead to a revocation of the patent if claim amendments are held to be insufficiently disclosed in the description.

In the webinar, Nattler provided insight into the European disclosure requirements for claim amendments. She also noted strategies for drafting a patent disclosure that allows for a broad variety of claims amendments that will withstand scrutiny before and after grant.

A German native, Nattler focuses her intellectual property law practice on patent prosecution and IP portfolio management, with a particular emphasis on the areas of mechanics, electronics, hydraulics and computerized processes. Prior to joining Brinks, Nattler gathered extensive experience in U.S., European and German patent prosecution. While employed in Europe, she was admitted to practice before the European Patent Office. Nattler attended Thomas Cooley Law School on a full academic scholarship and graduated magna cum laude. She holds an undergraduate degree in physics from Universität Bayreuth in Germany.

Brinks Gilson & Lione
The attorneys, scientific advisors and patent agents at Brinks Gilson & Lione focus their practice in the field of intellectual property. Brinks is one of the largest intellectual property law firms in the U.S. Clients around the world use Brinks to help them protect and enforce their intellectual property rights. Brinks lawyers provide counseling in all aspects of patent, trademark, unfair competition, trade secret and copyright law.

More information is at www.brinksgilson.com.

Intellectual Asset Management Ranks Brinks Gilson & Lione “At the Top of the IP List”; Ann Arbor Managing Shareholder Oberholtzer Singled Out in IAM Patent 1000

Brinks Gilson & Lione, one of the largest intellectual property law boutiques in the United States, is “at the top of the list” again this year for intellectual property according to IAM Patent 1000 2016—The World’s Leading Patent Professionals, Intellectual Asset Management (IAM) magazine’s guide to leading private practice patent professionals and firms.

The IAM Patent 1000, now in its fifth edition, quotes a source who says that Brinks “does a fantastic job in patent litigation.” The publication also praises Brinks’ patent prosecution practice, noting that it “performs flawlessly when it comes to the procurement of patents and adds tremendous value with its wider portfolio development and invention capture services.”

The IAM Patent 1000 also recognized 12 individual Brinks attorneys who were identified by clients and peers for their exceptional skill sets and insights into patent matters. In Ann Arbor, the publication cited managing shareholder Steven L. Oberholtzer for his ability to see client issues from all angles, thanks to his past engineering and in-house experience in the automotive industry. Notes IAM, “[Oberholtzer’s] facility for IP asset management, strategic guidance, and patent litigation makes his advice even more worldly-wise.”

The IAM Patent 1000 seeks to identify and profile leading private practice patent professionals and firms in the world’s key jurisdictions. Individuals qualify for a listing when IAM researchers receive sufficient positive feedback from market sources with knowledge of the attorney’s practice and the market within which he or she operates. Firms qualify on the basis of their depth of experience, market presence, and the level of work on which they are typically engaged.

More information about the IAM Patent 1000 2016 is at http://www.iam-media.com/Patent1000/.

Brinks Gilson & Lione
The attorneys, scientific advisors and patent agents at Brinks Gilson & Lione focus their practice in the field of intellectual property. Brinks is one of the largest intellectual property law firms in the U.S. Clients around the world use Brinks to help them protect and enforce their intellectual property rights. Brinks lawyers provide counseling in all aspects of patent, trademark, unfair competition, trade secret and copyright law.

More information is at www.brinksgilson.com.

Brinks Gilson & Lione to open office in IP hotspot, Shenzhen, China

Brinks Gilson & Lione, one of the largest intellectual property law firms in the United States, and with an office in Ann Arbor, Mich., announced it has filed an application with the Shenzhen Justice Bureau to establish an office in Shenzhen, China, the firm’s first location overseas.

Shenzhen, a city in Guangdong Province in southeastern China, is a major financial and manufacturing center. The province is known for high technology and biological research, including for pharmaceutical and bioengineering companies, and for its favorable business environment for hardware start-ups—earning it the nickname of “China’s Silicon Valley.” Brinks will be the first foreign law firm to open an office in Shenzhen.

“Brinks Gilson & Lione’s purpose in establishing our new office in Shenzhen is simple,” said Brinks president James R. Sobieraj. “We want to be closer to our clients in China. Brinks already represents a number of China’s largest and most successful enterprises with intellectual property needs in the U.S. They rely on Brinks’ range of experience as they enter and expand in the U.S. and the global marketplace. Now we’ll have a local presence to serve these valued clients.”

Brinks’ Shenzhen office will help Chinese enterprises that export to the U.S. take full advantage of U.S. IP laws by helping them protect their innovations and defend against assertions of infringement by their products, including in U.S. federal district court, before the U.S. International Trade Commission (ITC), and at the U.S. Patent and Trademark Office.

Brinks shareholder and litigator Harold V. Johnson, who has more than three decades of experience in the practice of IP law, will be the managing shareholder in Shenzhen. Attorneys Gustavo Siller, Yuezhong Feng, and Elizabeth Chien-Hale will be able to take advantage of this new location as they continue to represent Chinese clients. Brinks also plans to hire local Chinese technical and administrative personnel.

“Brinks Gilson & Lione has demonstrated a strong track record of success representing Chinese companies facing patent litigation in the United States,” said Johnson. “As Chinese companies expand to the global market, they will continue to face legal challenges to the importation and sale of their products in the U.S., including with respect to intellectual property. Brinks is well-positioned to help.”

Brinks attorneys have represented Chinese companies in several patent infringement actions in U.S. district courts and before the ITC. The firm successfully defended a major Chinese telecommunications company in three ITC actions, and successfully represented another Chinese enterprise in its first abbreviated new drug application (ANDA) under the Hatch-Waxman Act. Brinks has also represented Chinese clients in litigations brought in district courts in the District of Delaware, the Northern District of California, the Eastern District of Texas, and the Northern District of Illinois.

The announcement of the opening of Brinks’ Shenzhen office comes on the heels of the firm’s participation in the 2016 Annual Conference of the Licensing Executives Society International (LESI) in Beijing, China on May 15-18, 2016, and Brinks’ co-sponsorship of the 2016 IP Strategy Forum: Taiwan, U.S. and China, in Taipei, Taiwan on May 20, 2016.

Brinks Gilson & Lione’s office in Shenzhen is the second new location the firm announced; the firm is also opening a new office in Tampa, Fla.

Brinks Gilson & Lione
The attorneys, scientific advisors and patent agents at Brinks Gilson & Lione focus their practice in the field of intellectual property. Brinks is one of the largest intellectual property law firms in the U.S. Clients around the world use Brinks to help them protect and enforce their intellectual property rights. Brinks lawyers provide counseling in all aspects of patent, trademark, unfair competition, trade secret and copyright law. More information is at www.brinksgilson.com.