Kelly J. Kubasta
Kelly J. Kubasta is an attorney and shareholder of Ferguson Braswell Fraser Kubasta PC. He focuses on a wide array of intellectual property, with particular emphasis on patent, trademark, and trade dress litigation and licensing. Kelly’s litigation experience, advising both plaintiffs and defendants, includes infringement issues involving patents, trademarks/service marks, product trade dress, and copyrights, as well as breach of contract, unfair competition, trade secret, and antitrust issues.
Kelly represents clients with products and services that cover a broad range of industries, including software, consumer goods, apparel, electronics, energy exploration devices, medical devices, automotive components, and architectural designs. He has substantial experience in Federal Court, both trial and through appeal, as well as in Texas state court. He has also represented clients in mediations to resolve disputes both before and during litigation.
Kelly is also skilled in strategic portfolio management and advises clients on effective methods of protecting and leveraging their intellectual property assets- with special emphasis on maximizing both short-term and long-term benefits while balancing the clients’ budget concerns. To this end, he has drafted dealer/franchisee agreements, negotiated software development and licensing agreements, constructed Internet e-commerce policies, and resolved domain name disputes through ICANN. A registered patent attorney, he has prepared and prosecuted both utility and design patents in various fields, including mechanical and electronic devices, industrial equipment, telecommunications, optics, software, and business methods.
Kelly earned a J.D. from the University of Texas School of Law, and a Bachelor of Science degree in mechanical engineering from University of Texas at Austin.
Kelly J. Kubasta
- Intellectual property litigation
- Business and commercial litigation
- Intellectual property licensing and counseling
- Patent, trademark, and copyright prosecution
- Local counsel for IP and commercial litigation matters
- Virtual IP Counsel
- Intellectual Property Section of State Bar of Texas
- Chair, Ethics and Unauthorized Practice Committee, 2006-2008
- American Intellectual Property Law Association, 1997-Present
- Dallas Association of Young Lawyers, 1997-2011
- Advanced Negotiation and Mediator Skills Training (Abrams Mediation), 2004
- Teaching Quizmaster, University of Texas School of Law, 1995-1996
- A/V Preeminent® Peer Review Rating by Martindale-Hubbell
- Best Lawyers in Dallas, D Magazine (2011, 2013, 2015) – Intellectual Property
- Super Lawyer, Texas Super Lawyers (2011-2015) – Intellectual Property Litigation
- Rising Star, Texas Super Lawyers (2010-2011) – Intellectual Property Litigation
- Best Lawyers in America Selection, The Best Lawyers in America(c) (2014) – Litigation – Intellectual Property
Speeches, Publications, Presentations
- “Recent Intellectual Property Cases and Their Effect on Litigation Strategies,” Intellectual Property Law 2013: Top Lawyers on Trends and Key Strategies for the Upcoming Year (Inside the Minds), December 2013.
- “Litigation Affecting Five Key Patent Law Areas,” Intellectual Property Law, 2012 ed.: Top Lawyers on Trends and Key Strategies for the Upcoming Year (Inside the Minds), December 2012.
- “The Intersection of International Trade and Exhaustion of IP Rights: Can Gray Market Goods Still Be Imported?,” ABA IP Roundtable, March 2011.
- “Proactive Approaches to the IP Licensing Process,” Intellectual Property Licensing Strategies, 2011 ed.: Leading Lawyers on Educating Clients, Drafting Licensing Agreements, and Resolving Disputes (Inside the Minds), December 2010.
- “The Million Dollar Idea – I’ve Got It, So Now What Do I Do With It?,” Harvard-Wharton Entrepreneurial Special Interest Group, November 2010.
- “Divided Infringement and Mixture of Statutory Subject Matter,” University of Texas School of Law 12th Annual Intellectual Property Law Symposium 2010.
- “To Buy or Not To Buy: Acquired Patents as Litigation Tools,” Mid-Winter Institute of the American Intellectual Property Law Association 2010.
- “Help! They’re Copying My Home Page,” Dallas Bar Association – Computer Law Section, August 2009.
- “Common IP-Related Mistakes Made in Corporate Web Sites,” Dallas Bar Association Headnotes 2009.
- “KSR v. Teleflex: A Case Study,” Dallas Bar Association – IP Section, May 2007.
- “Trade Secret Review,” Annual Intellectual Property Law Conference of State Bar of Texas – Intellectual Property Section 2006.
- “Patent Damages: Strategies for Success,” Annual Meeting of State Bar of Texas – Intellectual Property Section 2004.
- “Practical Issues When Proving and Disproving Patent Damages,” University of Texas Intellectual Property Symposium 2003.
- “Issue Preclusion as Applied to Claim Interpretation,” Texas Intellectual Property Law Journal, Vol. 10, No. 3, Spring 2002 (with James P. Bradley).
- “Recent Developments in Trademark Law,” Texas Intellectual Property Law Journal, Vol. 6, No. 2, Winter 1998 (with David L. Hitchcock).
- “Adapting the Copyright Laws for New Digital Audio Media,” Entertainment, Publishing and the Arts Handbook, 1997-98 Edition.
Admitted to Practice
- State of Texas in 1997
- Supreme Court of Texas in 1997
- United States Patent and Trademark Office in 1999
U.S. Court of Appeals:
- Federal Circuit in 1998
- Fifth Circuit in 2005
U.S. District Court:
- Northern District of Texas in 1998
- Southern District of Texas in 1999
- Eastern District of Texas in 2004
- District of Colorado in 2005
- Western District of Texas in 2008
- Western District of Michigan in 2011
- J.D., University of Texas School of Law, 1997
- B.S. Mechanical Engineering, University of Texas at Austin, 1993
- My Possibilities (mypossibilities.org), Board Member, 2012-present