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.

Michigan Chapter of the Licensing Executives Society Announces May 22 Meeting

Developing a licensing program and first to file patent reform shift are on meeting agenda

Ann Arbor, MICH—May 16, 2013 – The Michigan Chapter of the Licensing Executive Society (LES) announces its next meeting will be held on Wednesday May 22, 2013 at the Ann Arbor office of intellectual property law firm, Brinks Hofer Gilson & Lione.

The Licensing Executives Society is a professional society comprised of over 6,000 members engaged in the transfer, use, development, manufacture and marketing of intellectual property. The Michigan Chapter is led by Michael Spink, a shareholder in the Ann Arbor office of Brinks, one of the largest intellectual property law firms in the U.S., and Mark A. Robinson, Managing Director of Ann Arbor-based KOIOS Consulting Group, LLC. The meeting is designed to meet the interests of entrepreneurs, CEOs, CFOs, venture capitalists, academics, auto industry and manufacturing executives and other involved with IP and IP licensing.

At the May 22 meeting, Peter Kim of Irvine Pointe Advisory, LLC, will offer insights on “Preparing for a Licensing Campaign.” Kim will talk about the lessons he learned over his decade of experience working at Rambus, Acacia Research, IPVALUE Management, and Walker Digital. His presentation will share the “nuts and bolts” of developing a licensing program.

Eric Sosenko, a shareholder at Brinks and chair of the firm’s task force on patent reform, will discuss “Putting Corporate Intelligence to Use in a Post-AIA World.” One of the central provisions of the Leahy-Smith America Invents Act (AIA), which went into effect on March 16, 2013, changed the U.S. system of awarding rights to a patent from a “first-to-invent” system to a “first inventor-to-file” system for patent applications filed on or after March 16. The law also expands the definition of prior art used in determining patentability. Sosenko will address the importance of corporate intelligence in this AIA world.

LES Michigan Chapter Meeting
When: May 22, 2013: 9:30am – 12:30pm
Where: Brinks Hofer Gilson & Lione, 524 South Main Street, Suite 200, Ann Arbor 48104-2921; (734) 302-6000
Registration: The cost is $20 to attend and includes lunch. Register online here or contact Mike Spink at mspink@usebrinks.com or 734.302.6000.

Brinks Hofer Gilson & Lione
Brinks has more than 160 attorneys, scientific advisors and patent agents who specialize in intellectual property, making it one of the largest intellectual property law firms in the U.S. Clients around the world use Brinks to help them identify, protect, manage and enforce their intellectual property. Brinks lawyers provide expertise in all aspects of patent, trademark, unfair competition, trade secret and copyright law. The Brinks team includes lawyers with advanced degrees in all fields of technology and science. Brinks has offices in Ann Arbor, Detroit, Chicago, Washington, D.C., Research Triangle Park, N.C., Salt Lake City and Indianapolis. More information is available at www.usebrinks.com.

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Brinks Names Six Michigan Shareholders as Firm-Wide Practice Group Chairs for 2013

Ann Arbor Managing Partner also Named to Firm’s Board of Directors

ANN ARBOR/DETROIT – January 14, 2013 – Six attorneys from the Michigan offices of Brinks Hofer Gilson & Lione, one of the largest intellectual property law firms in the U.S., have been named or reappointed to firm-wide Practice Group Chairs within the Firm for 2013.

In the area of specialty Legal Practice Groups, Michael Spink (Ann Arbor) will serve a third term as Chair of the Intellectual Asset Management Group and Margaret Dobrowitsky (Detroit) will serve a fourth term as Chair of the Licensing Group.

In the Industry Practice Groups, Bill Boudreaux (Ann Arbor) will continue as Co-Chair of the Biotech/Pharma Industry Practice Group; Kelly Burris, Managing Partner of the Firm’s Detroit office, will serve a second term as Chair of the Green Technology Group; Eric Sosenko (Ann Arbor) will continue as chair of the Patent Reform Task Force and also serve as the new Chair of the Mechanical Group, and Lawrence G. (L.G.) Almeda (Ann Arbor) will continue as Chair of the Nanotechnology Group and also serve as Chair of the firm’s new Brazil task force.

Additionally, Steven L. Oberholtzer, Managing Partner of the firm’s Ann Arbor office, has been selected to serve on the firm’s Board of Directors for 2013. This is the third non-consecutive term Oberholtzer has served on the firm’s board.

Brinks Hofer Gilson & Lione
Brinks has more than 160 attorneys, scientific advisors and patent agents who specialize in intellectual property, making it one of the largest intellectual property law firms in the U.S. Clients around the world use Brinks to help them identify, protect, manage and enforce their intellectual property. Brinks lawyers provide expertise in all aspects of patent, trademark, unfair competition, trade secret and copyright law. The Brinks team includes lawyers with bachelors and advanced degrees in all fields of technology and science. Brinks has offices in Detroit, Ann Arbor, Chicago, Washington, D.C., Research Triangle Park, Salt Lake City and Indianapolis. More information is available at www.usebrinks.com.

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