Jim counsels clients on the protection, licensing, and enforcement of intellectual property rights and has extensive experience in Patent litigation and prosecution. Jim also regularly counsels clients on technology development and licensing agreements, with an emphasis on software products, and participates in corporate deals requiring the analysis of intellectual property assets.
Jim represents clients in a variety of industries, including computer software and hardware, computer networks, wireless communication systems, telecommunications devices, semiconductor chips, medical devices, and industrial manufacturing machinery.
Jim holds bachelor's and master's degrees in Electrical Engineering from Georgia Tech and is experienced in hardware and software design. Jim is a frequent lecturer on intellectual property topics and is an adjunct instructor at Georgia Tech. He has also been recognized as a "Rising Star" in the field of intellectual property law by Law & Politics and Atlanta Magazine.
Representative Experience
Technology Law:
Works with large and small companies, including start-ups, to protect intellectual property, develop licensing and IP strategies, prepare and negotiate software and technology development and licensing agreements, obtain venture capital, and provide consultation on intellectual property issues regarding merger and acquisition deals.
Patents:
Prosecutes foreign and domestic utility and design patent applications for inventions in the telecommunication, electronics, computer hardware/software, and mechanical arts.
Software:
Prepares and negotiates agreements concerning software development and licensing. Jim has negotiated software license agreements involving business enterprise software solutions for a variety of clients with numerous large software providers and integrators including Oracle, SAP, and BearingPoint.
Patent Litigation:
Litigates and provides advice concerning disputes in federal trial and appellate courts involving patents, copyrights, trademarks, trade secrets, and other intellectual property and technology related claims.
Trademarks:
Prosecutes U.S. trademark applications.
Licensing:
Prepares and negotiates licensing agreements for patents, trademarks, and general technology.
Opinions:
Prepares non-infringement opinions in the areas of telecommunications, electronics, and software. Performs product evaluations for infringement of patents by clients' competitors.
Transactional:
Prepares contracts and agreements, including software development agreements, product development agreements, employee agreements, consulting agreements, confidentiality and non-compete agreements, employee handbooks, and corporate intellectual property policies. Jim also regularly consults on large corporate deals, including mergers and acquisitions, involving technology companies and intellectual property rights issues.
Other Distinctions
Selected as a Georgia "Rising Star" in Intellectual Property by Law & Politics and Atlanta Magazine, 2005-2009
Registered to practice before the U.S. Patent and Trademark Office
Work Experience
Partner, Troutman Sanders LLP, 2008-present
Associate, Troutman Sanders LLP, 2000-2007
Adjunct Instructor of Intellectual Property Law, Georgia Institute of Technology, School of Public Policy (2003-present)
Engineer, Georgia Tech Research Institute, 1997
Graduate Research Engineer, Georgia Tech Research Institute, 1996-1997
Co-op Engineer, Georgia Tech Research Institute, 1991-1996
Registered Patent Attorney
Memberships
· Georgia State Bar (Member, Intellectual Property Law and Computer Law sections)