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 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.

Brooks Kushman Senior Attorney to Discuss Intellectual Property Law for the Growing Business

Brooks Kushman Senior Attorney Timothy Clise will provide an overview of common intellectual property legal issues for growing businesses at Automation Alley on Tuesday, June 14, 2016.

In his presentation, Clise will discuss how changes in IP law over the last 10 years have left companies of all sizes faced with a variety of challenges to maintain a current IP strategy that maximizes protection. He will address critical intellectual property issues, how to overcome common obstacles and strategies to maximize IP protection, while providing practical guidance on trademarks, patents and licensing agreements.

Automation Alley is a technology business association dedicated to growing the economy of Southeast Michigan and enhancing the region’s reputation around the world. The presentation is part of the Automation Alley 7Cs™ program, an initiative aimed at accelerating the growth of manufacturing startups using a customized seven-step process including intense coaching and access to investment and resources.

Clise’s practice at Brooks Kushman focuses on U.S. and international patent preparation and prosecution in the electrical, mechanical and electromechanical arts. He also advises his clients on design, trademarks and trade secrets for developing meaningful, worldwide intellectual property portfolios. As a recognized leader in intellectual property law, Clise has been invited to speak on internal best practices, how to develop meaningful patent portfolios, and routinely speaks in Asia and Europe on various US patent law topics.

Clise holds a Juris Doctor from the University of Dayton and a Bachelor of Science in Electrical Engineering from Michigan State University. Prior to joining Brooks Kushman he was an Intellectual Property Attorney for a major wireless communications corporation and Managing Partner of his own Minnesota-based firm.

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 www.BrooksKushman.com.

Brinks Gilson & Lione attorney to serve as panelist at IP Counsel Exchange on Post-Grant Patent Challenges at the PTAB

ANN ARBOR – Maya 5, 2016 – Jon Beaupré, a shareholder in the Ann Arbor office of Brinks Gilson & Lione, one of the nation’s largest intellectual property law firms, will be a presenter in the Momentum IP Counsel Exchange on Post-Grant Patent Challenges at the PTAB on May 11 in San Jose, California.

Beaupré will serve as the moderator for a panel topic, “Building Your IP Litigation Dream Team – Tips for Selecting, Screening & Managing Outside Counsel to Oversee PTAB Proceedings.” The panel will provide insight on how to:
• Screen counsel’s actual hands-on experience at the PTAB
• Weigh the pros and cons of a joint defense agreement in the PTAB context
• Evaluate a firm’s work product in this unique forum
• Remain in the driver’s seat and control your litigation strategy
• Oversee a tight litigation budget

At Brinks, Beaupré is co-chair of the Post-Grant Patent Group. His practice includes all areas of intellectual property litigation, including patent litigation, trademark and false advertising disputes, and trade secret and unfair competition litigation. Beaupré also counsels clients on intellectual asset management and prepares agreements and licenses. He practices in a wide array of forums, including federal courts, the Patent Trial and Appeal Board, the International Trade Commission and the United States Court of Appeals for the Federal Circuit.

To learn more about the event, visit the Momentum 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.

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Brinks Gilson & Lione attorney presents at Sports & Fitness Industry Association Summit

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., served as a presenter at the Sports & Fitness Industry Association’s (SFIA) 2016 Litigation, Regulatory & Risk Management Summit (LR2MS) held Feb. 1-2 in New Orleans. The summit provided attendees guidance on navigating the changing landscape of legal risk and regulatory threats related to the sports and fitness industry.
Cleland, who is a member of the legal task force of SFIA, delivered a presentation entitled, “A New Weapon in the Patent Litigation Wars: Challenging Patents at the PTO Using Post-Grant Proceedings,” on Feb. 2 at the summit. The session focused on the importance of inter partes review practice and how businesses in the sports and fitness industry have a new and often overlooked weapon in challenging a patent’s validity. The presentation addressed how using IPRs at the Patent Trial & Appeal Board (PTAB) can be faster, reduce costs and help achieve success in patent litigation.
At Brinks, Cleland’s 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.

His 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. Cleland also specializes in post-grant review proceedings before the Patent Trial and Appeal Board, a forum that is quickly becoming the busiest patent court in the country.

To learn more about the 2016 Litigation, Regulatory & Risk Management Summit (LR2MS), click here.

About Sports & Fitness Industry Association
The Sports & Fitness Industry Association (SFIA), formerly the SGMA, is the trade association of leading industry sports and fitness brands, suppliers, retailers and partners. The organization’s mission is to “Promote Sports and Fitness Participation and Industry Vitality” by focusing on core product areas for the industry. Learn more at www.sfia.org.

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 Property Attorney Daniel Dailey Rejoins Brinks Gilson & Lione in Ann Arbor

Brinks Gilson & Lione, one of the nation’s largest intellectual property law firms, announced today that patent attorney Daniel P. Dailey, formerly with Brinks from 2007 to 2010, has rejoined the firm’s Ann Arbor office as an associate attorney, bolstering its patent prosecution practice group.

Dailey combines his legal experience with his engineering background to help clients succeed in today’s evolving patent landscape. He prepares and prosecutes U.S. and international patent applications for technologies related to chemical, petroleum, and mechanical engineering, materials science, electronics and semiconductors, medical devices, and the manufacturing arts. He also prepares freedom-to-operate opinions, infringement opinions, and appeal briefs.

“Dan had a successful career as a design and manufacturing engineer in the automotive industry for more than two decades before becoming an attorney, and that technical knowledge, combined with 12 years of legal experience, is an enormous asset to Brinks and our clients,” said Steven L. Oberholtzer, the managing shareholder of Brinks’ Ann Arbor office. “We’re very pleased to welcome him back.”

Dailey earned his J.D. at Wayne State University Law School. He also earned an M.S. in chemical engineering from Wayne State University and holds a B.S. in chemistry from Lawrence Technological University.

Dailey is registered to practice before the USPTO and is a member of the State Bar of Michigan. He holds ten U.S. patents for innovations related to electronics manufacturing, molding and plastic processing, and integrated airbag systems.

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.

U.S News & World Report and Best Lawyers Again Rank Brinks Gilson & Lione Highest in Patent, Trademark Law for 2016

ANN ARBOR, MI—Dec. 11, 2015 – Chicago-based Brinks Gilson & Lione, one of the largest intellectual property law firms in the United States, and with offices in Ann Arbor and Detroit, has again been recognized by U.S. News and World Report and Best Lawyers in their “Best Law Firms” rankings for 2016.

The sixth edition of the annual Best Lawyers listing ranks Brinks nationally in its highest level at Tier 1 in the category of Patent Law for the sixth year in a row, and in Trademark Law for the fourth year in a row. Brinks Gilson & Lione also was ranked Tier 2 in Litigation-Intellectual Property and Litigation-Patent nationally, also for the fourth consecutive year.

In the metropolitan rankings, encompassing 185 major U.S. markets, Brinks’ Ann Arbor office achieved a Tier 1 designation for Patent Law, Brinks’ Chicago office is rated Tier 1 in Copyright Law, Litigation-Intellectual Property, Litigation-Patent, Patent Law, and Trademark Law, and Brinks’ office in Research Triangle Park, N.C. earned a Tier 1 ranking for Biotechnology Law and Patent Law.

Thirteen Brinks attorneys were selected by their peers for inclusion in the 2016 edition of The Best Lawyers in America. Three of them—Allen R. Baum, William H. Frankel, and Steven L. Oberholtzer, office managing partner of the Ann Arbor office—also received ”Lawyer of the Year” recognition in their respective practice areas.

To be eligible to participate in the “Best Law Firms” submission process, a firm must have at least one attorney who has received high enough peer-review to be listed in the current edition of Best Lawyers.

The “Best Law Firms” rankings are based on a rigorous evaluation process that includes client and lawyer evaluations, peer review from leading attorneys in their field, and review of additional information provided by the law firms themselves. Clients were asked to provide feedback on firm practice groups, addressing expertise, responsiveness, understanding of a business and its needs, cost-effectiveness, civility, and whether they would refer another client to the firm. Peers voted on expertise, responsiveness, integrity, cost-effectiveness, whether they would refer a matter to a firm, and whether they consider a firm a worthy competitor.

The 2016 “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.

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