IP boutique law firm opens Detroit office in same building as USPTO office

The intellectual property law firm Brinks Hofer Gilson & Lione will open a new Detroit office next month, in the same building as the new Elijah J. McCoy United States Patent and Trademark Office (USPTO), according to firm president James R. Sobieraj.

The USPTO opened the first satellite office in its history in Detroit on July 13, 2012. According to USPTO statements, these satellite offices are being established to allow "businesses to move their innovations to market more quickly and giving them more room to create new jobs." The Detroit office is the first to open; others will open later in Dallas-Fort Worth, Denver and Silicon Valley.

"The USPTO's decision to open new satellite offices is a strategic move to help support the growing importance of intellectual property to business. The Detroit office will provide an on-site location for Brinks and its domestic and international clients to participate more effectively in patent examination and administrative trial proceedings created under the recently enacted America Invents Act (AIA)," said Sobieraj on making the announcement.

On Sept. 16, 2012, a series of final rules issued by the USPTO became effective to implement three administrative trial provisions for challenging patents under the AIA, which are: i) post-grant review of patents during a nine-month window after the patent issues, ii) inter partes review after the later of the nine-month window or, if a post-grant review is instituted, the termination of the post-grant review, and iii) the transitional program for covered business method patents. These administrative trial proceedings provide companies with an alternative to litigation in a U.S. Federal Court for challenging the patentability of an invention claimed in an issued U. S. patent.

The Detroit office will be the second in Michigan for the firm, which has had an office in Ann Arbor since 2000. Brinks has its headquarters in Chicago, with additional offices in Washington, D.C., Indianapolis, Research Triangle Park and Salt Lake City.

Kelly K. Burris, currently a shareholder in Brinks' Ann Arbor office, will serve as managing partner of the new Detroit office, where she will be joined by Brinks shareholder Margaret Dobrowitsky and associate Keith D. Weiss, Ph.D.

Burris chairs Brinks' Green Technology Practice Group and focuses her practice on patent prosecution and procedures in the mechanical and electrical arts, and materials science. Burris also performs intellectual property due diligence for mergers and acquisitions and handles other matters relating to transactions, as well as managing and administering corporate IP portfolios and policies, and strategic competitive intelligence. In August 2012, Burris testified as an expert witness before the House Subcommittee on Intellectual Property, Competition and the Internet in Washington D.C., speaking in opposition of HR 3889, a bill that would drastically reduce the term for certain design patents. Prior to her law career, Burris was an aeronautical engineer with McDonnell Douglas and Boeing for over 11 years, and she is also a licensed pilot and extremely active in the field of aviation.

Dobrowitsky chairs Brinks' Licensing Practice Group and focuses on drafting and negotiating intellectual property and commercial agreements. Prior to joining Brinks, she was senior patent counsel for the engine and energy management business operations of a multinational U.S. automotive technology corporation, where she also served as intellectual property counsel for its mergers and acquisitions, information technology and telecommunications groups. In addition, she was patent counsel for the company's Mexican operations. Dobrowitsky has served as Treasurer of the U.S. Group of the Association Internationale pour la Protection de la Propriete Intellectuelle (AIPPI), and is a past Chair of the International Law Section of the State Bar of Michigan.

Dr. Weiss brings a unique background to Brinks with over 20 years of corporate experience in R&D management, product development, and technology licensing. He is listed as an inventor on 26 U.S. patents and 9 pending U.S. patent applications regarding advanced materials, components, and systems used in the automotive, aerospace, coatings, plastics, and microelectronic industries. Dr. Weiss focuses his practice on patent prosecution and intellectual property agreements with emphasis towards IP portfolio planning, development, and management.


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