Jim's electrical and electronic engineering background adds value to the full range of intellectual property legal services he provides. Since 1978, he has engaged primarily in patent, copyright, trademark and trade secret law, including client counseling, portfolio management, preparation and prosecution of U.S. and foreign patent and trademark applications; litigation; and licensing. Numbered among his clients are Fortune 100 corporations and mid-size and small companies alike.
Jim has extensive experience in patentability, validity, infringement, clearance and claim construction analysis and opinions. In the licensing area, he has assisted clients on trademarks, patents and other legal documents, including non-disclosure, assignment, employment, consulting, joint venture and customer agreements. In client counseling and portfolio management, Jim's work involves identifying protectable intellectual property; maximizing portfolio value; designing policies and enforcement programs; providing searches and opinions regarding patentability, validity, infringement and right-to-use; dispute negotiation and settlement; advising on conflict avoidance; assisting in introducing new products; conducting design-around projects; and implementing worldwide transfer of intellectual property rights, including due diligence investigations in connection with merger transactions.
A former software research engineer at Whirlpool and a patent attorney at Motorola, Jim now provides legal counsel to a variety of industries, including:
· medical devices, electrical and electronic devices
· digital electronics, including computer systems
· methods of doing business
· client information retrieval and assistance systems for enterprise applications, including Internet contact routing applications, website server systems
· call processing, including data collection, processing and agent selection applications
· e-business inventions, including both direct marketing and enterprise applications
· optical fiber communication systems and radio frequency devices, including pagers, mobile radios, cellular systems, Global Positioning System and Radio Frequency Identifier (RFID) technologies
Jim taught intellectual property law as a professor at The John Marshall Law School in Chicago, with courses in patent office practice and substantive patent law. He also was an associate professor of electronics at Moraine Valley College, where he taught courses in analog and digital electronic, computer systems and software programming.
Professional Associations & Memberships
· Institute of Electrical and Electronic Engineers
· Intellectual Property Law Association of Chicago
Publications
Electronics and Computer Patent Practice, The Patent Resource Group
Lifeboat Ethics, Learning and the Law
Review Course Manual for the Patent Office Examination, The John Marshall Law School