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.

Developing IP in evolving autonomous vehicle market demands thorough understanding of FRAND commitments

Emerging technologies continue to infiltrate cars, and notably autonomous vehicles, making them increasingly complex, intelligent and connected. This outgrowth calls for the industry’s standard-setting bodies to strike a balance between the intellectual property rights driving these standards and the benefits derived from others’ needs to utilize them, according to Jon Beaupré, a shareholder in the Ann Arbor office of Brinks, Gilson & Lione, one of the largest intellectual property law firms in the U.S.

One customary approach is the use of a licensing obligation that is fair, reasonable and non-discriminatory or “FRAND,” also known as “RAND” (reasonable and non-discriminatory). Under FRAND terms, the standard-setting bodies may require their members to provide benefits such as agreeing to grant licenses or disclose intellectual property rights.

Companies that enter into FRAND commitments often do so through membership or participation in standard-setting organizations (“SSOs”), which are organizations that develop technical standards for all adopting parties in a particular field. For example, SSO members often indicate their willingness to allow their particular platform, technology, or product to be available for licensing, which in turn, enables widespread adoption in the marketplace.

“Businesses often consent to FRAND-type commitments for their reciprocal terms and the fact that the benefits may outweigh the value of the intellectual property disclosure in the long run,” Beaupré said. “Also, many businesses realize that consenting to these commitments is the price of admission for being a member of a standard-setting organization.”

“In the case of autonomous vehicles, the multitude of new technologies that have to interface with each other, as well as the numerous parties involved in the operation, has brought renewed interest and scrutiny to FRAND,” Beaupré said.

Before jumping into a FRAND commitment, Beaupré advises businesses to carefully consider all legal implications involved in doing so. Besides licensing, other factors to bear in mind include:
• Patent Portfolio Management: Patents can add to the overall value of a growing company and should be taken into account when setting business and financial strategy.
• Escalation of FRAND Litigation: Recent litigation over FRAND patent royalties has some experts asking whether FRAND is effective.
• Antitrust Compliance: Issues may include attempts to set prices or financial terms or activity that blocks new market entrants or suppresses competition.
• Software Licensing: Copyrights and legalities regarding the creation, use and licensing of software have a growing role in new vehicles technologies, and therefore, must be carefully managed.

“Businesses that proactively manage the legal implications of FRAND within a changing automotive industry will be best positioned to take advantage of these new developments,” Beaupré concludes.

Brinks Gilson & Lione

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

More information is available at 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 attorneys again named Michigan Rising Stars by Super Lawyers

John A. Lingl and Josh E. Ney, Ph.D., attorneys in the Ann Arbor office of Brinks Gilson & Lione, one of the largest intellectual property law firms in the U.S., have been named Michigan Rising Stars 2016 by Michigan Super Lawyers. The Rising Star recognizes the top up-and-coming attorneys in the state who are 40 years old or younger or have been practicing for 10 years or less.

John Lingl, named a Michigan Rising Star in intellectual property for the fourth consecutive year, is a shareholder at Brinks and focuses his intellectual property law practice on patent, copyright and trademark litigation and prosecuting both foreign and domestic patent applications in numerous technological areas, including semiconductors, electrical systems, voice over Internet protocol (VoIP) systems, packet switching and routing, network traffic optimization, Internet search technologies, advertising and behavioral targeting technologies, optical systems, terahertz radiation systems, x-ray systems, automotive interior systems and automotive powertrain systems.

Lingl is a member of the State Bar of Michigan Intellectual Property Law Section, the Michigan Intellectual Property Law Association and the Washtenaw County Bar Association. He holds a J.D. from The Sandra Day O’Connor College of Law at Arizona State University and a bachelor’s degree in computer engineering from Kettering University.

Josh Ney, named a Michigan Rising Star in intellectual property for the second consecutive year, is an associate at Brinks and focuses his practice on patent litigation and patent prosecution in the pharmaceutical, biotechnology and chemical industries. His litigation experience includes both U.S. District Court litigation and Inter Partes Review proceedings in front of the Patent Trial and Appeal Board. Ney has represented pharmaceutical clients in patent litigation and prosecution matters related to new chemical entities, second medical uses, pharmaceutical formulations, synthetic processes, and pharmaceutical polymorphs. His experience covers a range of therapeutic applications, including central nervous system disorders, cardiovascular disease, lower urinary tract disorders, Huntington’s Disease, antibiotic therapy and pain management. In addition to his pharmaceutical practice, Ney has litigated and prosecuted patents related to chemical products and processes. He also has experience providing clearance analyses for clients’ new products and IP due diligence for clients involved in financing transactions, mergers and acquisitions.

Ney received his J.D., cum laude, from the University of Michigan Law School and his Ph.D. in chemistry from the University of Michigan. He earned his bachelor’s degree in chemistry from Dartmouth College, where he graduated magna cum laude. Ney received prestigious fellowships from Pfizer and from the American Chemical Society Division of Organic Chemistry while pursuing his Ph.D. He is a member of the American Chemical Society.

About Super Lawyers
Super Lawyers, part of Thomson Reuters, is a research-driven, peer-influenced rating service of outstanding lawyers who have attained a high degree of peer recognition and professional achievement. Attorneys are selected using a patented multiphase selection process in which peer nominations are combined with third party research. The mission of Super Lawyers is to bring visibility to those attorneys who exhibit excellence in practice. The Super Lawyers lists are published in Super Lawyers Magazines and in leading city and regional magazines across the country. For more information, go to SuperLawyers.com.

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

More information is available at www.brinksgilson.com.

Brinks Gilson & Lione attorneys again named Michigan Rising Stars by Super Lawyers

John A. Lingl and Josh E. Ney, Ph.D., attorneys in the Ann Arbor office of Brinks Gilson & Lione, one of the largest intellectual property law firms in the U.S., have been named Michigan Rising Stars 2016 by Michigan Super Lawyers. The Rising Star recognizes the top up-and-coming attorneys in the state who are 40 years old or younger or have been practicing for 10 years or less.

John Lingl, named a Michigan Rising Star in intellectual property for the fourth consecutive year, is a shareholder at Brinks and focuses his intellectual property law practice on patent, copyright and trademark litigation and prosecuting both foreign and domestic patent applications in numerous technological areas, including semiconductors, electrical systems, voice over Internet protocol (VoIP) systems, packet switching and routing, network traffic optimization, Internet search technologies, advertising and behavioral targeting technologies, optical systems, terahertz radiation systems, x-ray systems, automotive interior systems and automotive powertrain systems.

Lingl is a member of the State Bar of Michigan Intellectual Property Law Section, the Michigan Intellectual Property Law Association and the Washtenaw County Bar Association. He holds a J.D. from The Sandra Day O’Connor College of Law at Arizona State University and a bachelor’s degree in computer engineering from Kettering University.

Josh Ney, named a Michigan Rising Star in intellectual property for the second consecutive year, is an associate at Brinks and focuses his practice on patent litigation and patent prosecution in the pharmaceutical, biotechnology and chemical industries. His litigation experience includes both U.S. District Court litigation and Inter Partes Review proceedings in front of the Patent Trial and Appeal Board. Ney has represented pharmaceutical clients in patent litigation and prosecution matters related to new chemical entities, second medical uses, pharmaceutical formulations, synthetic processes, and pharmaceutical polymorphs. His experience covers a range of therapeutic applications, including central nervous system disorders, cardiovascular disease, lower urinary tract disorders, Huntington’s Disease, antibiotic therapy and pain management. In addition to his pharmaceutical practice, Ney has litigated and prosecuted patents related to chemical products and processes. He also has experience providing clearance analyses for clients’ new products and IP due diligence for clients involved in financing transactions, mergers and acquisitions.

Ney received his J.D., cum laude, from the University of Michigan Law School and his Ph.D. in chemistry from the University of Michigan. He earned his bachelor’s degree in chemistry from Dartmouth College, where he graduated magna cum laude. Ney received prestigious fellowships from Pfizer and from the American Chemical Society Division of Organic Chemistry while pursuing his Ph.D. He is a member of the American Chemical Society.

About Super Lawyers
Super Lawyers, part of Thomson Reuters, is a research-driven, peer-influenced rating service of outstanding lawyers who have attained a high degree of peer recognition and professional achievement. Attorneys are selected using a patented multiphase selection process in which peer nominations are combined with third party research. The mission of Super Lawyers is to bring visibility to those attorneys who exhibit excellence in practice. The Super Lawyers lists are published in Super Lawyers Magazines and in leading city and regional magazines across the country. For more information, go to SuperLawyers.com.

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

More information is available at www.brinksgilson.com.

Brinks Gilson & Lione’s Oberholtzer interviewed by Comcast Newsmakers; advises caution on collaborative projects between the auto and tech industries

Brinks Gilson & Lione’s Oberholtzer interviewed by Comcast Newsmakers; advises caution on collaborative projects between the auto and tech industries

Steven L. Oberholtzer managing shareholder of the Ann Arbor office of Chicago-based Brinks Gilson & Lione, one of the largest intellectual property law firms in the U.S., was a guest on Michigan’s Comcast Newsmakers, a news platform presenting public affairs information via interviews with local, state and federal officials and business and community leaders.

The topic of the interview, which can be viewed here, was a discussion on the unique challenges faced by traditional automakers and their supplier partners amid high profile collaborations between the auto and tech industries. Oberholtzer advises the auto industry to protect its core competencies while using shared technologies vital to the ongoing development of autonomous vehicles, hybrids and other technology-driven initiatives which reflect a fundamental shift in the auto industry. The interview followed a blog post Oberholtzer contributed to Automotive News in June 2016 on the same topic.

Oberholtzer’s practice at Brinks focuses on patent and trademark counseling, corporate intellectual property policy development and administration, technology licensing, joint development and joint venture relationship agreements. He has extensive experience with the intellectual property legal issues of the automotive industry and a lifelong interest in the industry and its products. Oberholtzer was previously employed as a senior project engineer with a domestic OEM manufacturer and as in-house patent counsel for a Tier 1 supplier. In private practice, he has acted as primary outside counsel for a number of Tier 1 and lower tier supplier engagements that include worldwide responsibility for all intellectual property issues and management of teams of attorneys handling all facets of these matters.
Oberholtzer is the principal author of a primer on intellectual property entitled, The Basic Principles of Intellectual Property Law. He holds a B.S. in mechanical engineering from Kettering University, formerly known as the General Motors Institute, and received his J.D. from the Detroit College of Law at Michigan State University.

Comcast Newsmakers is presented online at www.comcastnewsmakers.com and across Comcast’s national Xfinity on-demand service.

Brinks Gilson & Lione
The attorneys, scientific advisors and patent agents at Brinks Gilson & Lione focus their practice in the field of intellectual property, making Brinks one of the largest intellectual property law firms in the U.S. Clients around the world rely on Brinks to help them protect and enforce their intellectual property rights. Brinks attorneys provide counseling in all aspects of patent, trademark, unfair competition, trade secret and copyright law. More information is available 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 Gilson & Lione’s Oberholtzer named to The Best Lawyers in America© 2017

Steven L. Oberholtzer managing shareholder of the Ann Arbor office of Chicago-based Brinks Gilson & Lione, one of the largest intellectual property law firms in the U.S., was selected by his peers for inclusion in The Best Lawyers in America© 2017 in the area of patent law. Oberholtzer has appeared on the Best Lawyers list since 2011.

Oberholtzer’s practice focuses on patent and trademark counseling, corporate intellectual property policy development and administration, technology licensing, joint development and joint venture relationship agreements. He also has experience in United States Patent and Trademark Office administrative proceedings including interferences, re-examinations, re-issues, trademark oppositions and patent application preparation and prosecution.

Oberholtzer has extensive experience with the intellectual property legal issues of the automotive industry. He has a lifelong interest in the industry and products, and was previously employed as a senior project engineer with a domestic OEM manufacturer and as in-house patent counsel for a Tier 1 supplier. In private practice, Oberholtzer has acted as primary outside counsel for a number of Tier 1 and lower tier supplier engagements that include worldwide responsibility for all intellectual property issues and management of teams of attorneys handling all facets of these matters.

Oberholtzer is the principal author of a primer on intellectual property entitled, The Basic Principles of Intellectual Property Law. He holds a B.S. in mechanical engineering from Kettering University, formerly known as the General Motors Institute, and received his J.D. from the Detroit College of Law at Michigan State University.

About Best Lawyers®
Inclusion in Best Lawyers® is based entirely on peer reviews, using a sophisticated and transparent survey process. The methodology is designed to capture as accurately as possible the consensus opinion of leading lawyers about the professional abilities of their colleagues within the same geographical and legal practice area. More information is at www.BestLawyers.com.

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

Brooks Kushman Attorneys Elected State Bar IP Section Officers

Brooks Kushman attorneys David C. Berry and Hope Shovein have been elected to serve one-year terms as Chair and Chair-Elect, respectively, of the State Bar of Michigan Intellectual Property Law Section. The election took place on Saturday, July 23, 2016 at the section’s annual meeting at the Grand Hotel on Mackinac Island.

As Chair, Berry will be responsible for oversight of the group of over 1200 members, report on the section’s efforts and contributions at each annual State Bar of Michigan meeting and oversee the section’s various events throughout the year. He also chairs the steering committee of the Michigan Patent Pro Bono Project, which is a service project of the section. Berry is a registered patent attorney and has more than 15 years of law practice experience focusing on patent litigation and IP licensing. He has represented clients in all phases of litigation, including pre-trial proceedings, bench and jury trials and appeals, including arguing before the U.S. Court of Appeals for the Federal Circuit.

As Chair-Elect, Shovein will succeed Berry as Chair in July 2017. She will also preside over the section’s meetings and oversee the Intellectual Property committees as needed. Shovein previously served as the section’s Secretary-Treasurer. Shovein focuses her practice on the procurement and enforcement of trademark rights, including proceedings before the Trademark Trial and Appeal Board. Shovein specializes in helping clients enforce their rights in any medium, such as the unauthorized use of trademarks in website content, and representing clients in domain name disputes.

The Intellectual Property Law Section of the State Bar of Michigan provides education, information and analysis about laws and procedures pertaining to federal and state patent, trademark and copyright laws through a variety of activities including meetings, seminars and publication of a newsletter. The section reports proposed legislation, supports the legal education of members and the general public and promotes the fair and just administration of such laws.

About Brooks Kushman P.C.

Brooks Kushman P.C. is a leading intellectual property (IP) and technology law firm with offices in Michigan and California, and represents clients nationally and internationally with respect to protection, enforcement and monetization of IP, including patents, trademarks, copyrights and trade secrets. The firm has more than 90 intellectual property professionals specializing in various technical disciplines, and has a reputation for providing leading IP counseling with a focus on the business objectives of their clients.

Brooks Kushman counts a number of Fortune 100 companies across a variety of industries among its clients. The firm is also recognized by leading legal publications and rankings, including Corporate Counsel magazine, U.S. News & World Report, Law360, Intellectual Asset Management, Managing Intellectual Property, World Trademark Review, and Intellectual Property Today.

For more information, please visit http://www.BrooksKushman.com.

Brooks Kushman Shareholder Featured in Detroit Legal News

Brooks Kushman Shareholder William G. Abbatt is featured in Detroit Legal News’ July 8, 2016 article entitled “Ripple Effect: British Ex-Pat Attorney Looks at Impact of ‘Brexit’ on IP laws.”

The article discusses the potential fallout from the United Kingdom’s recent decision to separate from the European Union, how (if at all) the decision will influence changes in intellectual property (IP) laws and legal issues touching U.S. companies with an eye to the European market. One key issue for US-based IP professionals will be the effect of potential changes to the E.U.’s planned Unitary Patent and Unified Patent Court.

According to Abbatt, “Across the pond, the U.K. is one of the more economically significant territories. It has one of the most developed legal infrastructures. The U.K.’s absence from the E.U. may chill some enthusiasm for the Unitary Patent and Unified Patent Court.”

Abbatt’s practice involves all aspects of domestic and foreign patent prosecution. He regularly counsels inventors, small to medium sized businesses and corporations on the development and management of patent portfolios. Bill’s practice extends beyond traditional patent prosecution and includes patent litigation and licensing. He was recently appointed as a Technical Expert and Mediator in a patent infringement suit.