Alex Behrakis is an intellectual property and corporate attorney with more than nineteen years of experience in law firm and in-house settings. Alex’s practice emphasizes strategic counseling, patent and trademark prosecution, opinions related to infringement and validity, product clearance and freedom-to-operate studies, advising engineering teams on designing around intellectual property rights of third parties, due diligence studies, licensing, and development and management of patent and trademark portfolios, and related litigation. Alex counsels domestic and foreign clients ranging from individual inventors and emerging startup companies to large multinational corporations.
Alex has significant experience with a wide range of technologies including computer & communication networks, cloud computing, computer software, cybersecurity, artificial intelligence, machine learning, IoT, robotics, data storage systems, electro-optics and lasers, signal processing, control systems, e-commerce, digital & analog electronics, hybrid microelectronics, machine vision, biomedical devices (e.g., artificial implantable heart, mesh stents, drug-eluting stents, photo ablation and cardio ablation systems), and consumer products.
In addition, Alex has extensive experience advising clients on business matters and transactions including business formation, joint ventures, complex technology agreements, licensing, establishing guidelines and corporate policies, website content and ecommerce, website privacy policies and terms-of-use, advertising and packaging claims, product safety, FTC regulations including COPPA. Alex has negotiated and drafted a variety of agreements including licenses, end-user license agreements, music licenses, joint development agreements, operating agreements, asset purchase agreements, service agreements, distribution agreements, sales representative agreements, manufacturing agreements, settlement agreements, cease and desist letters, confidentiality agreements, and amendments to contracts.
Prior to entering the legal field, Alex worked as an electrical engineer and software engineer and has more than fifteen years engineering experience involving project management, research and development, hardware and software design, real-time embedded systems, system integration, advanced sensor systems, development of software tools and utilities, and data analysis.
Education
- Georgia Institute of Technology, M.S. Cybersecurity (expected 2021)
- Suffolk University Law School, (J.D., cum laude)
- Worcester Polytechnic Institute, (M.S., Computer Science)
- University of Massachusetts – Lowell, (M.B.A.)
- University of Massachusetts – Lowell, (B.S., Electrical Engineering)
Admissions
- Massachusetts
- U.S. District Court, District of Massachusetts
- U.S. Court of Appeals, First Circuit
- U.S. Court of Appeals, Federal Circuit
- U.S. Patent and Trademark Office
- Advising clients, including individuals, startup companies, universities, and multinational corporations, on securing intellectual property protection and related business strategy
- Performing non-infringement, invalidity, and freedom to operate analyses and drafting legal opinions.
- Advising engineering teams on designing around intellectual property rights of third parties.
- Performing due diligence to assess intellectual property portfolios for venture capital investment, mergers and acquisitions, joint ventures, and licensing opportunities.
- Preparing and prosecuting patent and trademark applications for individuals, startup companies, multinational corporations, and university technology transfer offices.
- Advising on commercial transactions, licensing, e-commerce, website clearance, corporate policies, advertising and product packaging clearance, and regulatory compliance (e.g., FTC, CPSC).
- Established guidelines and policies pertaining to press releases, advertising and product packaging claims, website content and ecommerce, product safety, unsolicited inventor relations, and FTC regulations.
- Negotiated and drafted a variety of agreements including licenses, joint development agreements, joint venture agreements, asset purchase agreements, cobranding agreements, service agreements, distribution and sales representative agreements, manufacturing agreements, supply agreements, settlement agreements, cease and desist letters, non-disclosure/confidentiality agreements.
- Conducted website clearance studies and drafted associated terms & conditions and privacy policies.
- Conducted open source code clearance studies.
- Drafted limited warranties and end user license agreements for client products and software.
- Negotiated and drafted music licenses, including both master use and composition synchronization licenses, to include music in client produced video games and mobile software applications.
- Negotiated and drafted celebrity endorsement deals and licenses for inclusion of celebrity names and likeness on client products, packaging, and promotional materials.
- Negotiated and drafted licenses for famous brand properties for inclusion on client product, packaging, and promotional materials.
- Negotiated and drafted licenses for third-party software for integration into client product.
- Prepared and prosecuted patent applications in a wide variety of technology areas including computer & communication networks, cloud computing, computer software, cybersecurity, artificial intelligence, machine learning, IoT, robotics, data storage systems, biomedical devices including artificial implantable heart, mesh stents, drug-eluting stents, photo ablation and cardio ablation systems.
- Performed patent mining, invention disclosure evaluation, and patentability assessments.
In-house experience:
- Executive Intellectual Property Counsel for a U.S. subsidiary of a Fortune Global 500 Company. Responsible for intellectual property and commercial legal matters pertaining to operations in North America.
- General Counsel reporting to the CEO and President of three commonly owned, privately held consumer products companies with global product distribution and operations in the U.S., China, Hong Kong, and Canada. Responsible for all legal matters pertaining to all three companies worldwide.
Litigation:
- Gibson Guitar Corp. v. 745 LLC, Civil No. 3:11-0058 (M.D. Tenn) – as General Counsel of defendant oversaw patent litigation and provided strategy approval
- Laurence Vinocur v. First Act Inc. et al., case no. HG13679189 (Superior Court of State of California, County of Alameda) – as General Counsel of defendant oversaw California Prop 65 litigation and provided strategy approval
- VoxPath Networks, Inc. v. Broadview Networks, Inc. et al., No. 9:08-cv-127-RAS (Eastern District of Texas) – member of litigation team
- Whetstone Electronics, LLC. v. Agfa Corporation, et al., Civ. No. 6:08-cv-317-LED (Eastern District of Texas) – member of litigation team
