Marc F. Malooley

Patent Prosecution, IP Licensing, & Patentability Opinions

vCard
person photo

Marc Malooley is a licensed professional engineer and came to Brooks Kushman after working as an engineer for almost ten years. His practice includes patent preparation and prosecution regarding a wide range of inventions in the mechanical and mechanical-electrical arts. He represents clients ranging from Fortune 100 companies to sole inventors, and assists them in all aspects of intellectual property protection.

Another focus of Marc`s practice is the preparation and negotiation of intellectual property agreements, including licenses, joint development agreements, confidentiality agreements, and other types commercial agreements involving intellectual property. Marc crafts agreements to maximize the protection and commercial value of his client`s intangible assets such as patents, copyrights, trademarks, and trade secrets. In this way, Marc not only helps create intellectual property assets for his clients, but also helps them utilize these assets to their fullest.

Marc`s engineering experience includes work in the automotive industry and the medical device industry, where he was Director of Engineering, and later, Director of Quality Assurance for a medical device manufacturer. As Director of Engineering, Marc was involved in the design and development of new product lines, gaining an in-depth knowledge of the product development process. As Director of Quality Assurance, Marc was in charge of regulatory compliance and worked effectively with the FDA to achieve his company`s business goals.

When negotiating agreements, Marc often works directly with his client`s upper management and executives to provide advice and information critical to their decisions. Moreover, Marc`s engineering background and extensive representation of inventors in patent matters allows him to be conversant with engineers, technicians and other technical specialists from many different fields. Because of this diverse background, Marc effectively communicates with his clients at all levels, and they are comfortable entrusting to him the protection of their valuable intellectual property assets.

In his spare time, Marc repairs and collects antique clocks and is a member of the National Association of Watch & Clock Collectors.

Organizations and Affiliations

State Bar of Michigan

Michigan Intellectual Property Law Association

National Society of Professional Engineers

Order of the Coif

Order of the Barristers

Media Coverage

Featured, “Joint development agreements smooth way for auto tech partnerships,” Crain’s Detroit Business, March 2016

Publications

Co-Author, “Patent Licenses Versus Covenants Not to Sue: What Are the Consequences?” August 2008

Presentations

Speaker, “Intellectual Property Rights for the Professional Engineer,” Legal Issues for Michigan Professional Engineers Seminar, Ann Arbor, MI, August 2006

Speaker, “The Different Areas of Intellectual Property and What an Engineering Manager should do and not do to Protect Intellectual Property,” Engineering Management Society of the Institute of Electrical and Electronics Engineers (IEEE), Southeastern Michigan Section, August 2004

Education

J.D., Indiana University, magna cum laude, Chancellor`s Fellow

M.S., Mechanical Engineering, University of Michigan

B.S., Mechanical Engineering, Wayne State University, summa cum laude