John J. Brooks III

Jay Brooks has extensive experience across both the legal and business aspects of high technology businesses. He has a unique blend of business and legal experience that allows him to provide pertinent legal advice to business and technology leaders that carefully considers the legal and other priorities of their business. These experiences have been helpful in his providing counsel to small, medium and large clients to help them build their business as well as to help them develop, maintain or monetize intellectual property portfolios. Jay continues to maintain a close tie to the business aspects of clients by continuing to serve as in-house counsel to a 120+ person research and development organization.

Jay’s technical experience crosses many different fields to include computer software, computer security systems, data networking, artificial intelligence, big-data analysis, optics, medical devices, medical systems, mechanical devices as well as consumer products. His work has allowed him to develop a deep experience in the intellectual property and export issues specific to developing leading edge technologies under Government contract vehicles such as the Small Business Innovative Research (SBIR) and Small Business Technology Transfer Innovation Research (STTR) programs.

Representative legal work that Jay has performed includes:

• Led the development and execution of Patent strategies to include drafting, prosecuting and maintain patent filings with US and foreign Patent Offices for small, medium and large clients.
• Developed and executed trademark strategies for clients to include prosecuting matters before the US Patent and Trademark Office Trademark Trial and Appeal Board.
• Advised market leading research and development organization on the intellectual property and export issues specific to U.S. Government funded projects.
• Provided patent and other legal counsel to a world-class medical practitioner and researcher to develop, maintain and monetize a broad patent portfolio.
• Advised a leading on-line content provider on proper protection strategies for intellectual property associated with content such as podcasts an other on-line materials.
• Advised artists and authors on copyright and trademark strategies to include enforcing artist’s rights against an infringer in US District Court.
• Represented multiple clients in drafting and negotiating licensing and partnership agreements with Fortune 100 companies, world-class universities and small businesses.

In addition to his legal experience, Jay also brings a understanding of the technology business through such business roles as the following:

• In-House IP Counsel for a 120+ person Research and Development Company.
• Director, Business Development and Marketing, AimNet Solutions. Technology: Managed Security and Data Communication services.
• Director of Enterprise Services, NaviPath (a CMGI Company). Technology: VPN and Data Communication services.
• Service Line Director, Genuity/BBN. Technology: Internet Protocol based Fax and derivative services.
• Product and Development Manager, Genuity/BBN. Technology: Ultra-low-power data networking and Managed Security services.
• Business Development and Product Manager, GTE Government Systems. Technology: ATM encryption and wireless communications.

In addition to being licensed to practice before the U.S. Patent and Trademark Office and being a member of the Massachusetts Bar, Jay is a member of the American Intellectual Property Law Association, the Boston Patent Law Association, the Volunteer Lawyer for the Arts and the National Association of Patent Practitioners. Jay is also a Certified Global Business Professional as recognized by the North American Small Business International Trade Educators.

Jay graduated from Suffolk University Law School in Boston and the United States Military Academy at West Point, New York. Jay has also completed business studies at the University of Rhode Island and Harvard Extension School as well as data communications studies at Northeastern University.