John E. Nemazi

Co-Chair Patent Prosecution

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John-Nemazi

With over 30 years of experience, John serves as the Co-Chair of Brooks Kushman`s patent prosecution group. His practice includes all aspects of domestic and foreign patent prosecution.

John has a deep understanding of various technologies, which he utilizes to protect his client`s intellectual property rights. He works with small and medium sized companies to Fortune 500 corporations on the development and management of patent portfolios.

A company in search of opportunities in new markets often looks for ways to produce a product that competes with products already on the market. John facilitates such efforts by assessing the existing technology and producing a “patent map” that sets forth the market participants and their patent coverage. In this regard, John helps manufacturers find paths to market by designing around existing inventions.

By providing a cross-disciplinary mix of design, legal, and strategic advice at an early stage in the product development process, John helps companies avoid spending research and development money needlessly on “false starts” that ultimately cannot be commercialized. And importantly, John`s services can significantly reduce the time required to take a product from conception to production.

In addition to his strategic design counsel, John is also involved with the firm`s Post Grant Proceedings practice where he counsels clients regarding reexaminations, Inter Partes Review proceedings and Covered Business Method proceedings.

John also advises clients with “freedom to operate” opinions, ensuring that existing patents will not impede a proposed technology. He also analyzes patented products to provide advice on the patent`s claim coverage—along with advice on how to produce a product that will not infringe those claims, perhaps with enhanced functionality or at a lower cost.

Prior to joining the firm, John worked on the General Motors engineering staff as a project engineer in the company`s Advanced Product Engineering Department. He later entered private practice, working on a wide variety of matters, including prosecution, product design, technology licensing, and litigation surrounding mechanical technology, engine controls, and manufacturing processes.

Organizations and Affiliations

Intellectual Property Owner’s Association

Michigan Intellectual Property Law Association

State Bar of Michigan

Association of University Technology Managers

Michigan Venture Capitalists

Recognitions

“Leading Lawyers,” Leading Lawyers Magazine, 2014-2019

“IAM Patent 1000 Recommended Individual,” Intellectual Asset Management, 2014 – 2018

“Leader in the Law”, Michigan Lawyers Weekly 2018

“Top Lawyer,” DBusiness Magazine, 2013, 2015 – 2016

Michigan Super Lawyers, Intellectual Property, 2007 – 2013, 2015 – 2018

Best Lawyers in America, 2017-2019

Press Releases

    Media Coverage

    Featured, “Ford wins PTAB challenge over hybrid vehicle tech,” Law360, November 2015

    Featured, “Ford Wins More Hybrid Vehicle Patent Appeal Board Reviews,” Law360, November 2015

    Featured, “Ford Wins Another PTAB Review of Paice Hybrid Car Patent,” Law360, November 2015

    Featured, “USPTO Rules for Ford in Dispute Over Hybrid Vehicle Tech,” Law360, September 2015

    Featured, “2014 IAM Patent 1000,” Intellectual Asset Management, June 2014

    Featured, “2013 Super Lawyers List,” Super Lawyers, September 2013

    Featured, “Engineering Firm Aims to Head Off Sewage Overflows,” Crain’s Detroit Business, March 2011

    Featured, “Patent Attorney Interview,” Detroit Legal News, July 2010

    Featured, “2009 Super Lawyers, Intellectual Property Category,” Super Lawyers, October 2009

    Publications

    Co-Author, “Global Patent Offices Increasingly Share the Work,” National Law Journal, December 2010

    Co-Author, “False Patent Marking: Will Your Company be Sued Next?” Corp! Magazine, September 2010

    Co-Author, “Avoiding Intent in a False Patent Marking Action,” Law360, July 2010

    Author, “Recent Changes in the Law Regarding False Patent Marking in the United States,” Brooks Kushman Newsletter, February 2010

    Co-Author, “The Provisional Priority Land Mine,” Intellectual Property & Technology Law Journal, January 2004

    Education

    J.D., Detroit College of Law

    M.S., Business Administration, Wayne State University

    B.S., Mechanical Engineering, General Motors Institute