Resumes of Professional Staff
Brian K. Johnson

2010 – present – Of Counsel

Michaelson & Associates

Shrewsbury, New Jersey

Of Counsel for firm’s electrical and computer/internet practice.   Practice specialties:

·       IP licensing and related agreements: patent and trademark licensing.

·       Patent preparation and prosecution: US applications, corresponding international applications, and US counterparts to international applications.

·       Preparation of opinions of counsel relating to infringement, invalidity, and patentability.

·       Virtual corporate counsel functions including:

-  Software and data protection, privacy management.

-  Management of IP portfolios as a business asset.

-  Acquisition and divestiture negotiation, due diligence.

-  Risk management, product clearances and claims management.

-  Establishment of invention harvesting programs.

-  Establishment of corporate “best IP practices.”

2006-2010 - Senior Intellectual Property Counsel
Nokia Siemens Networks, LLC US
Iselin, New Jersey

Founding member of licensing and litigation IP legal group providing services for worldwide mobile equipment operations. Practice group functional responsibilities:

·       Coordination and operation of all worldwide, corporate licensing matters and assertion defenses.

·       Acquisition and divestiture negotiation and due diligence, particularly involving the transfer of Siemens’ assets to the Nokia Siemens Networks joint venture.

·       Risk management: product clearances and right-to-use counseling.

·       Patent and trademark licensing (in/out) and enforcement (offensive/defensive).

·       Some litigation and related indemnification management.

2001-2006 - Intellectual Property Counsel
Siemens Corporation
Iselin, New Jersey

Member of IP legal group, rendering all patent, trademark and copyright services for Siemens AG and NAFTA subsidiaries.  Practice group responsibilities:

·        Medical - Computer Aided Design software group.

·        Telecommunications - landline, mobile and enterprise groups.

Functional responsibilities:

·       Identification of inventions as new corporate assets, including patent policy promulgation, adoption and implementation. 

·       Management of U.S. and International IP portfolios on the order of 1200 international patent families and 400 international trademark families.

·       Patent drafting and prosecution, including international coordination of the same.

·       Acquisition and divestiture negotiation and due diligence.

·       Risk management: product clearances and claims defense.

·       Drafting opinions of counsel relating to infringement, invalidity and patentability.

·       Patent and trademark licensing (in/out) and enforcement (offensive/defensive).

·       Active litigation management

2001 – Associate
Chadbourne & Parke LLP

New York, New York

·        Representation of internet domain name holders in ICANN domain dispute proceedings.

·       Preparation and prosecution of patents in the mobile communication and internet software industries.

·       Performance of IP due diligence in connection with large corporate mergers and acquisitions.

1998-2001 – Associate
Lerner, David, Littenberg, Krumholz & Mentlik LLP

Westfield, New Jersey

·        Representation of numerous small-to-midsize clients in all aspects of IP counseling.

·       Preparation and prosecution of patents in the semiconductor, mobile communication and e-commerce industries.

·       Analysis of large IP portfolios for right-to-use purposes within the bar code industry.

1997-1998 - Corporate Counsel/Project Director

GTN Technologies, LLC

Princeton, NJ

·        Representation of corporation in all IP-related matters, including corporate agreements, venture capital financing, strategic business partnering, patent and trademark portfolio management. 

·        Management of the entire telecommunications portion of the online reservation system.

1994-1996 – Associate
Pennie & Edmonds, LLP

New York, New York

·        Representation of high tech companies in advanced litigations including pretrial discovery and motion practice.

·       Preparation and prosecution of patents in the nascent internet and software industries.

1988-1992 – Member Technical Staff

AT&T Bell Laboratories

Holmdel & Middletown, New Jersey

Hardware and software design and development for several telecom products:

·       Digital Access and Cross Connect system – redundant controller hardware and firmware.

·       Merlin Private Branch Exchange – main CPU controller hardware and software.

New York University School of Law

1995 – JD – IP course work concentration        

University of Michigan College of Engineering

1989 – MS EE – cum laude

The Pennsylvania State University College of Engineering

1988 – BS EE summa cum laude, mathematics minor

 – Graduate Evan Pugh Honors Program with highest distinction

New Jersey (1996)
New York (1995)
U.S. Patent and Trademark Office (Reg. No. 46,808)
U.S. Court of Appeals for the Federal Circuit
U.S. District Courts (D.N.J., S.D.N.Y., and E.D.N.Y.)

Siemens Corporation and its subsidiaries

Representative patents: (click here to view)

Client references will gladly be furnished upon request.