Brinks Gilson & Lione attorney to present at the American Conference Institute’s Comprehensive Guide to Patent Reform conference

DETROIT – Kelly Burris, managing partner of the Detroit office of Brinks Gilson & Lione, one of the largest intellectual property law firms in the U.S., will serve as a conference speaker at the American Conference Institute’s third annual Comprehensive Guide to Patent Reform conference to be held Jan. 22 – 23 in New York City. The conference is intended to provide in-depth analysis, practice tips and guidance on how to adapt business practices to a post-America Invents Act world. Burris will participate on a panel that will discuss Innovative Practice Resources for Meeting with Success during Inter Partes Review.

At Brinks, Burris focuses her practice on proceedings at the United States Patent and Trademark Office (USPTO), including post-grant review proceedings and the preparation and prosecution of patent applications in the mechanical, materials science, and electrical arts. Burris also performs intellectual property due diligence for mergers and acquisitions and manages corporate IP portfolios and policies. She is co-chair of the firm’s post grant patent practice group. The new group, which oversees the firm’s post-grant proceedings before the USPTO, includes post-grant reviews, including covered business methods, and inter partes reviews, along with interferences, ex parte reexaminations, and legacy inter partes reexaminations. Additionally, Burris is chair of the firm’s green technology industry practice group.

A link to the American Conference Institute’s third Comprehensive Guide to Patent Reform program and registration information can be found here.

Brinks Gilson & Lione
Brinks Gilson & Lione has 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. Based in Chicago, Brinks has offices in Washington, D.C., Research Triangle Park, N.C., Ann Arbor, Detroit, Salt Lake City and Indianapolis. More information is 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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Patent Attorneys and Patent Seekers Alike Anticipate March 16th First to File Transition Date

ANN ARBOR –February 11, 2013 – For patent seekers and patent attorneys alike, March 16, 2013 will be a momentous date. That’s the day the U.S. transitions from its current “first-to-invent” system to a “first-inventor-to-file” (FITF) system under patent reform. Although the FITF system has been in place in every other country in the world for some time, U.S. companies are rightfully concerned about how best to prosecute patents under the new system, according to Eric Sosenko, a shareholder at Brinks Hofer Gilson & Lione, one of the largest intellectual property law firms in the U.S., and the leader of the firm’s patent reform task force.

“The new FITF system will simplify the determination of who is entitled to a patent on an invention, but the current system offers numerous benefits to applicants for patents” said Sosenko.

One major benefit of the current system is the ability to swear behind a cited reference based on the inception/conception date of the invention claimed in the application. That ability will no longer exist once the new patent laws of the America Invents Act (AIA) fully take effect. In addition, AIA provisions have expanded the scope of the documents and activities that can be used to reject patent applications. Thus, certain documents or activities may not be considered as “prior art” for a patent application filed before March 16, 2013, but will be for applications on or after March 16, 2013. Further benefits for pre-AIA patent applications are that such applications are not susceptible to invalidity challenges under the new Post-Grant Review proceedings and are less susceptible to third-party challenges by way of prior art submissions to the U.S. Patent and Trademark Office (USPTO) while the patent application is pending.
All regular, provisional, continuation, continuation-in-part and divisional patent applications filed before March 16, 2013 will be evaluated by the USPTO under the pre-AIA first-to-invent system. Thus, patent applicants will benefit from pursuing patent protection now for all inventions conceived before March 16, 2013 so as to preserve the first-to-invent advantage.

Actions before March 16, 2013
“Companies and inventors should take full advantage of the current system before the transition to AIA. From now until the FITF provisions become effective, companies and inventors should accelerate their invention development and generation of invention disclosures. They should also proceed quickly to review all existing invention disclosures, make decisions on patent filings and proceed with patent applications on all worthwhile inventions,” explained Sosenko.

Sosenko suggests the following actions in the areas of patenting decisions, invention disclosures and provisional patent applications.

Patenting Decisions
Patent review committees should meet frequently to hasten decisions relating to any new or existing invention disclosures. The committee should assess any outstanding invention disclosures for commercial or strategic importance and consider the following actions:

  • Proceeding now with patent applications on all important or potentially important core business inventions;
  • Proceeding with patent applications on inventions in highly competitive technologies (competitors will be seeking to file patent applications before the AIA transition and those filings will bar a company’s post-AIA filing, even if the date of invention precedes the competitor’s filing date);
  • Proceeding with invention disclosures that would be pursued as continuation-in-part (CIP) patent applications (CIP applications will not obtain the benefit of the related earlier filed application for the purpose of treatment as a pre-AIA filing).

Invention Disclosures
Companies should require both prolific and non-prolific inventors to review their projects and submit new invention disclosures as quickly as possible for review by the corporate patent review committee.

Provisional Patent Applications
Companies should consider the strategic use of provisional applications as the FITF effective date approaches. Provisional applications and their subsequent non-provisional counterparts will have the full complement of pre-AIA benefits. Companies should determine which inventions merit the effort of filing provisional applications, bearing in mind that any provisional application should describe a sufficiently enabled preferred embodiment and include claims and drawings. Embodiments that are non-enabled in a provisional application and subsequently enabled in a related post-AIA non-provisional application will result in the entire application being treated as a post-AIA filing.

“A new world awaits the patent community after March 16th. Until then, there’s still time to gain an advantage from the benefits of the current system, which has served this country well since the Patent Act of 1836,” concluded Sosenko.

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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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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Brinks Attorney Named Co-Chair of ABA Subcommittee on §102(b) Issues under Patent Reform

ANN ARBOR – November 27, 2012 – Eric J. Sosenko, a shareholder in the Ann Arbor office of Chicago-based Brinks Hofer Gilson & Lione, one of the largest intellectual property law firms in the U.S., has been named co-chair of the American Bar Association’s subcommittee on §102(b) Issues, a subcommittee of the Ex Partes PTO Affairs – Patents committee, which examines new implementation rules relating to prior art under patent reform (the America Invents Act).

Sosenko chairs the patent reform committee at Brinks. His intellectual property law practice focuses on the procurement, enforcement and licensing of patents and trademarks in all industrial fields, including the mechanical, electro-mechanical, medical and material arts. He counsels on the strategic implementation and management of domestic and international intellectual property portfolios for various multinational clients and deals with a wide range of intellectual property issues. In addition to his U.S. practice, Sosenko has an extensive international practice with significant experience in international protection, both directly with all major foreign intellectual property offices and under various multinational treaties, including the Patent Cooperation Treaty, and has presented at seminars in both China and Japan.

In addition to serving as co-chair of the ABA subcommittee on §102(b) Issues, Sosenko is active in other professional associations and serves as Secretary/Treasurer and council member for the Intellectual Property Law Section of the State Bar of Michigan.

Learn more about the American Bar Association at http://www.americanbar.org.

Brinks Hofer Gilson & Lione
Brinks has more than 140 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. In addition to Ann Arbor, Brinks has offices in Detroit, Chicago, Washington, D.C., Research Triangle Park, Salt Lake City and Indianapolis. More information is available at www.usebrinks.com.

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