Licensing
Beyond procuring protection for our clients’ innovations, trademarks and creative work, Brooks Kushman offers a variety of services to help clients enhance the value of their intellectual property and better manage their rights.
Our attorneys work alongside in-house legal and business teams to leverage patents, trade secrets, or portions of an IP portfolio that can often be used to generate new revenue, create new markets, or stone-wall the competition. We have advised companies of all sizes on preparing licenses, partnering transactions, and other strategic alliances that can provide access to resources that might otherwise remain unavailable. Our attorneys have structured and negotiated a wide variety of alliances that have resulted in meaningful new opportunities for our clients.
At Brooks Kushman, we believe that licensing decisions should be made within the context of a consistent strategy designed to maximize the value of the resources devoted to intellectual property development. We frequently provide agreement drafts, negotiation and strategic counsel to help clients leverage their own technologies, and have helped clients structure efficient and effective agreements to obtain rights in new technologies from outside sources.
Technology transfers and other grants of intellectual property rights can be extraordinarily complex, requiring a body of experience ranging from due diligence investigations to the drafting of the transfer agreements. At Brooks Kushman, we know how to structure technology transfers in a manner that ensures that our clients receive all of the contemplated benefits, with all reasonable limitations upon future liabilities. We bring significant knowledge of the technology at issue, expertise in IP law, and an understanding of our client’s business to each transaction.
Our team of transaction and licensing attorneys regularly advise clients on:
• Joint development agreements
• Non-disclosure agreements
• Technology transfer agreements
• Patent license agreements
• Joint marketing agreements
• Trademark License Agreement
• Trade secret agreements
Our team of transaction attorneys brings a level of business and technical experience that is unmatched in today’s marketplace. We work alongside our clients at every stage of the process—as they work with suppliers, co-developers, and customers—protecting their rights by knowing the law, the technology, and the business.
Brooks Kushman Welcomes New Shareholder Jason Burnette and New Associate Kristen Chui
SOUTHFIELD, Michigan- Brooks Kushman is pleased to welcome its newest shareholder Jason Burnette and newest associate Kristen Chui to our growing team. Burnette will not only join our bench of experienced mechanical engineers, but his extensive in-house counsel experience will add significant depth to our team and to our clients. Chui...
Brooks Kushman Shareholder Chris Smith Re-appointed Vice Chair of IPO Patent Licensing Committee
SOUTHFIELD, Mich., - Brooks Kushman Shareholder Christopher Smith was recently re-appointed as the Vice Chair of the Intellectual Property Owner Association (IPO) Patent Licensing Committee for the third year in a row by the IPO Board. The Patent Licensing Committee includes approximately 50 members from across the country who focus on intellectual property licensing...
Brooks Kushman Shareholder Re-appointed Vice Chair Of IPO IP Licensing Committee
SOUTHFIELD, Mich., - Brooks Kushman Shareholder Christopher Smith was recently re-appointed as the Vice Chair of the Intellectual Property Owner Association (IPO) IP Licensing Committee for the second year in a row. In this role, he will continue to help lead the efforts of the committee, which includes approximately 50 members from across...
Brooks Kushman Appoints Ben Harel As Chief Information Officer
SOUTHFIELD, Mich. – Brooks Kushman P.C. is pleased to announce that Ben Harel has been appointed Chief Information Officer of the firm. As the Director of IT at Brooks Kushman, Harel supported the growth of the firm through technology solutions, and will continue to do so in his new position. In...
Brooks Kushman Shareholder Appointed President of MIPLA
Southfield, Mich. – Brooks Kushman shareholder Rachel A. Smith has been appointed as Michigan Intellectual Property Law Association (MIPLA) President for the 2018-2019 term. As President, Smith will be responsible for acting as the official representative of the association. She will provide leadership and strategic vision to the organization to aid in its growth and importance,...
Brooks Kushman Shareholder Elected Vice Chair of IPO IP Licensing Committee
SOUTHFIELD, Mich., - Brooks Kushman Shareholder, Chris Smith, was recently elected Vice Chair of the Intellectual Property Owner Association (IPO) IP Licensing Committee. In his new role, he will help lead the efforts of the committee, which includes approximately 50 members from across the country, focusing on intellectual property licensing and...
Ranked As One Of The “Top 20 Firms” By Juristat
SOUTHFIELD, Mich. – Brooks Kushman has been ranked second among the Top 20 Firms in Tech Centers 3600 and 3700 in the United States based on an objective measurement of firm performance in front of the U.S. Patent and Trademark Office by Juristat. Tech Center 3600 represents Transportation, Construction, Electronic...
Brooks Kushman Welcomes Richard J. Cantor, Expands Patent Prosecution Practice
SOUTHFIELD, Mich. – Brooks Kushman is pleased to announce that Richard J. Cantor has joined the firm’s growing patent prosecution practice. Richard’s practice focuses on the preparation and prosecution of domestic and foreign patent applications in the computer software, electrical and mechanical arts. His practice extends beyond patent prosecution and includes infringement...
Brooks Kushman Expands Life Science and Chemistry Practice
SOUTHFIELD, Mich. – Brooks Kushman has expanded its patent prosecution team with the addition of Associate Anand Viswanathan. Viswanathan will support Brooks Kushman clients in the life sciences, medical device and chemistry industries in the firm’s Southfield, Michigan office. In his role with Brooks Kushman, Viswanathan will focus on preparing and...
Brooks Kushman Announces Four New Attorneys; Further Expands Medical Device and Trademark Practice Groups
SOUTHFIELD, Mich. – Building upon the firm`s expertise and diversity, Brooks Kushman P.C. – a nationally ranked intellectual property (IP) and technology law firm – has hired Kristin L. Murphy, Linda D. Mettes, Rachel A. Smith and Dorne J. McKinnon-Rybicki, adding more than 60 years of combined legal experience at...
Brooks Kushman Publishes Sixth Edition of Intellectual Property Primer Covering the Latest Changes in the IP Landscape
SOUTHFIELD, Mich. – Intellectual property (IP) has changed more in the last 10 years than ever before. To provide a basic understanding of the various aspects of current IP law, Brooks Kushman P.C. has issued the Sixth Edition of its IP Primer. The guide is written to help those who...
Halan Contributes Chapter to Book on Intellectual Property Licensing Strategies
Brooks Kushman litigation shareholder, John M. Halan, contributed to the Inside the Minds book, "Intellectual Property Licensing Strategies" with the chapter, "Drafting a License Agreement with an Eye to the Future." Halan highlights the following areas in the book chapter:Emerging Trends in IP Licensing StrategiesWorking with Licensors and LicenseesHandling a Possible...
Brooks Kushman Hires Industry Veteran Daniel Stock, Enhances Corporate Transactions Expertise
Brooks Kushman announced today that Daniel M. Stock, former in-house counsel at Ford Motor Co., has recently joined the law firm. The announcement was made by Ernie L. Brooks, president and founding partner. Stock – who has practiced intellectual property (IP) law for nearly 35 years – has significant experience...
Federal Court Criticizes Qualcomm Licensing Methods for SEP Patents, Finds Antitrust Violations
On May 21, 2019, the U.S. District Court for the Northern District of California entered a decision in a Federal Trade Commission action alleging that Qualcomm’s approach to wireless Standard Essential Patent licensing violated antitrust laws. FTC v. Qualcomm, Inc., Case No. 17-CV-00220-LHK (N.D. Cal. May 21, 2019). In a...
Brooks Kushman Associate Corey Neil Quoted on Drastic Industry Changes in Patent Strategies for Driverless Cars in a Managing IP Article
SOUTHFIELD, Mich. – Brooks Kushman associate Corey Neil was featured in a Managing IP article from their Patent Strategy section on November 21, 2019 in an article titled, “Tech Convergence Drives Auto to Burn Up Old Strategies” In this article, industry leaders discuss how new dynamics in the market for driverless cars are prompting car...
Marc Lorelli Featured In Corporate Counsel Article Focused On Open Source Software ACC Panel
SOUTHFIELD, MI – Brooks Kushman Shareholder Marc Lorelli was showcased in Corporate Counsel’s June 22, 2018 article, “Open Source Software: Great for Engineers, Tougher for In-House Attorneys.” The article was written about the Association of Corporate Counsel (ACC) Corporate Counsel University, a two-day program featuring panels that focus on various...
John LeRoy Quoted in IAM Article on Recent Speaking Engagement at IP Auto USA Event
SOUTHFIELD, MI – Brooks Kushman Shareholder John LeRoy was featured in IAM's May 11, 2018 article, "Communications woes, payment problems, German injunctions and more from IAM's IP Auto USA event." The article focuses on IAM's recent conference that brought together senior figures, including those from OEMs, companies throughout the supply...
John LeRoy Featured in Crain’s Detroit Business
Southfield, Mich. – Brooks Kushman Shareholder John LeRoy was featured in Crain’s Detroit Business’ July 23, 2017 article, “Automakers need to be ready when licensors come knocking.” The article focuses on the recent development of connected technologies in the automotive industry, such as cellular, WiFi, and the tens of thousands of purportedly “standard essential” patents...
Brooks Kushman President Featured in Crain's Detroit Business
SOUTHFIELD, Mich. – Brooks Kushman President Mark Cantor was featured in Crain’s Detroit Business’ Dec. 7 article, “Tech transfer office can help a professor turn intellectual gifts into gold.” The article is included in Crain’s bi-annual “Michigan Deal” publication.In the article, Cantor discusses legal considerations regarding the ownership of intellectual property in technology transfers,...
Four Brooks Kushman Lawyers Named to 2013 Super Lawyers List; Ten Attorneys Honored as Rising Stars
SOUTHFIELD, Mich. – Brooks Kushman P.C. is proud to announce that several of the firm`s attorneys have been named to the 2013 Super Lawyers list for their work in the intellectual property arena. The annual Super Lawyers listing honors outstanding lawyers from more than 70 practice areas who have attained...
Preparing for Your Company's Future - Defensive IP Due Diligence
SOUTHFIELD, MI – Brooks Kushman Shareholder, Kristin L. Murphy highlights the importance of intellectual property (IP) due diligence in a recent article, published in biolink, a MichBio e-publication, titled: “Preparing for Your Company's Future - Defensive IP Due Diligence.” In the article, Kristin addresses the strategies for undertaking an effective...
New Resource: Recent Developments in Information Technology Law Third Quarter 2013
Brooks Kushman patent attorney, Dave Syrowik, recently published a new legal resource titled “Recent Developments in Information Technology Law.” The document overviews key legal cases and opinions for the second quarter of 2013, including relevant cases from the U.S. Supreme Court, U.S. Courts of Appeal, U.S. District Courts, U.S. Patent...
The State of the Computer and Internet Law - 2008
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Patent Licenses Versus Covenants Not to Sue: What Are the Consequences?
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Michigan SuperLawyers 2006
Two of our lawyers - Ernie Brooks and Bill Abbatt - were recognized as "SuperLawyers" in the field of Intellectual Property, in the first Michigan SuperLawyers Listing published by Law & Politics, after a multi-step selection process. That process included a survey of all lawyers in Michigan who have been...
Restriking the Balance: The Uniform Computer Information Transactions Act (UCITA) and Reverse Engineering
Reprinting permission: This article is reprinted with permission from the Michigan Bar Journal.[Read more...]
What a Patentee Must Do to Prove Infringement and Damages of a Method Claim for Computer Software
Publication:Michigan Computer Lawyer
Brooks Kushman Shareholder John LeRoy Panelist at IPWatchdog SEP2020 Event
SOUTHFIELD, Mich. – Brooks Kushman Shareholder John LeRoy will be speaking on a panel at the upcoming IPWatchdog SEP 2020 virtual program. His panel titled “FRAND and the Automotive Value Chain” will discuss, among many things, the status of Standard Essential Patent litigation in the U.S. and abroad, valuation of...
Brooks Kushman Shareholder Christopher Smith To Present At IPO Association Virtual 2020 Annual Meeting
SOUTHFIELD, Mich. – Brooks Kushman shareholder Christopher Smith will speak at the Intellectual Property Owners (IPO) Association 48th Annual Meeting hosted virtually on September 21-24, 2020. This will be Smith’s third time in four years presenting at this conference. Smith’s panel titled, “Identifying and Avoiding Obstacles While Preparing Supplier Agreements,” the...
Brooks Kushman Shareholder Christopher Smith to Present at IAM Patent Licensing Event
SOUTHFIELD, Mich. – Brooks Kushman shareholder Christopher Smith will speak at the fifth annual IAM Patent Licensing event in San Francisco, California on October 3, 2019. The presentation, called “Making It Happen: Strategies for Cross-Industry Success,” will focus on how to develop a strategic approach to licensing opportunities with the continual convergence of industry...
Thomas Lewry and and Christopher Smith to Speak at Two Panels Focusing on Developments in Patents and Licensing
SOUTHFIELD, Mich. – Brooks Kushman shareholders Thomas Lewry and Christopher Smith are speaking at two panels hosted by the Association of Corporate Counsel (ACC) in Irvine, CA and Los Angeles, CA. Both panels are called hACCess: Essential Developments in Patents and Licensing. During the panels, Lewry and Smith will discuss the...
Corey Neil to Speak at Autolex Autonomous Vehicle Legal Forum
SOUTHFIELD, Mich. – Brooks Kushman patent attorney Corey Neil, in partnership with client Brose North America, will speak at the Autolex Automotive Legal Forum, organized by Managing Intellectual Property and Benchmark Litigation in Detroit, Michigan on September 25, 2018. At the forum, attendees and presenters will discuss the increasing reality of autonomous vehicles...
Brooks Kushman Shareholder Marc Lorelli To Serve As Panelist At 2018 ACC Corporate Counsel University
SOUTHFIELD, Mich., - Brooks Kushman Shareholder Marc Lorelli will serve as a panelist at the Association of Corporate Counsel (ACC) Corporate Counsel University in Philadelphia, PA. Brooks Kushman is also a sponsor of the event, and attorneys Kristin L. Murphy, Rachel Smith and Todd Dishman will also be attending. Lorelli’s panel, “Protecting Your Client’s IP,” will focus on...
Brooks Kushman Shareholder to Speak on IP Panel at Automotive Legal Summit
SOUTHFIELD, Mich. – IAM is hosting Auto IP USA in Detroit, a one-day event that will provide content-led programming and in-depth discussions with IP experts and key players across the auto industry. Topics include tactics to help you succeed in the constantly shifting patent landscape, the connection between Silicon Valley and Detroit,...
Brooks Kushman Attorneys to Speak at Michigan Intellectual Property Law Association Luncheon
SOUTHFIELD, Mich. – Brooks Kushman shareholder Chris Smith and Of Counsel David Berry will be speaking at the Michigan Intellectual Property Law Association February lunch meeting. Their presentation is titled “All Bark, No Bite: An Analysis of IP Contractual Terms that are Unenforceable or Result in Unintended Consequences.” The attorneys will discuss common...
Brooks Kushman Shareholder Christopher Smith to Present at IPO Association Annual Meeting
San Francisco, Cal. – Brooks Kushman attorney Christopher Smith will serve as a moderator at the Intellectual Property Owners Association 45th Annual Meeting in San Francisco, CA on September 18, 2017. The presentation, called “All Bark, No Bite: An Analysis of IP Contractual Terms That Are Unenforceable or Result in Unintended Consequences,” will...
Entrepreneur Law Seminar at Automation Alley
Troy, MI – Brooks Kushman attorneys Timothy B. Clise, Thomas Lewry, and Hope Shovein along with Clark Hill attorneys Ellen E. Hoeppner and James R. Waggoner, will present at an Automation Alley Entrepreneur Law Seminar on October 29, 2015. The seminar will provide an overview of common legal issues entrepreneurs...
Brooks Kushman Hosts Intellectual Property Panel at Accelerate Michigan Innovation Competition
SOUTHFIELD, Mich. – To help start-up companies understand the importance and value of intellectual property (IP), Brooks Kushman attorneys, Mark Cantor, president and Frank Angileri, shareholder will participate in the IP Panel at the Accelerate Michigan Innovation Competition, which the firm is also sponsoring. Cantor and Angileri are slated to participate...
Brooks Kushman's Tong Discusses Intellectual Property Law at Los Angeles Paralegal Association's 37th Annual October Conference
SOUTHFIELD, Mich. – Roland Tong, Senior Attorney at Brooks Kushman P.C., will discuss “Intellectual Property Law Fundamentals” at the Los Angeles Paralegal Association`s (LAPA) 37th Annual October Conference. Tong will speak from 1:15 p.m. to 2:15 p.m. on Oct. 19 at the Omni Los Angeles Hotel. In his presentation, Tong will...
Technology Licensing Basics - What You Need to Know
Intellectual property licensing skills for software and other technology have become an increasingly valuable tool for in-house counsel. From licensing software to massive data sets, listen to this webinar to learn what you need to know to draft these sometimes complicated agreements. Speakers discussed what you need to look for when...
Navigating License and Joint Development Agreements; Avoiding Litigation
In today’s technological world, companies are advancing technology and entering new markets on a regular basis. Often, these market entries forge new business/supplier relationships. In this webinar, attorneys from Brooks Kushman discussed and analyzed IP considerations that arise in common business transactions, including how to identify, address, and analyze key...
IP Provisions Made Simple
In-house counsel sometimes feel intimidated by IP clauses, especially if they lack the background. This Webcast will discusses and analyzes IP considerations that arise in common business transactions, including how to identify, address, and analyze key intellectual property issues in a transaction. The Webcast reviews sample clauses to use, identifies...
IP Analytics – Powerful Strategies for Portfolio Management
In-house counsel are faced with a myriad of challenges when it comes to management of a large intellectual property (IP) portfolio. Studying analytics to take a deep-dive into their portfolio often takes a backseat to other responsibilities. And until recently, many data-supported perspectives were not even readily available. Now, however,...