Jim helps clients identify, acquire, license and protect their highest-value intellectual property assets. As Chair of the firm’s Intellectual Property Department and a recognized leader in the intellectual property field, Jim leverages his experience as an engineering project manager to ensure that clients receive practical advice, clear communications, responsive support and efficient service.
Jim draws on a deep well of patent knowledge to support clients in:
- patent prosecution matters
- patent infringement, validity and freedom-to-practice studies
- designing around competing patents
- IP due diligence
Jim also supports the firm’s IP litigation teams when clients are involved in disputes.
Jim’s patent experience spans a range of technologies, including: electronic devices; computer systems and software; vehicle automation, advanced driver assistance systems and other robotic systems; lighting systems; power generation and distribution equipment; wireless communication technologies; printing and packaging systems; medical devices; data security and encryption technologies; blockchain technologies; auto parts; virtual and augmented reality systems; consumer products; and food and beverage production systems.
In his work with early-stage companies, Jim has guided the development of IP portfolios that led to successful exits through acquisition by technology leaders including Amazon, Autodesk, Google, Microsoft, Motorola, Neilsen, Proofpoint, Sandvik and Xerox.
Jim is also well-versed in copyright and trademark laws, and he has experience with IP transactions of all sizes. He works on a daily basis with:
- software licenses
- patent and trademark licenses
- supply chain agreements for technology-focused businesses
- technology transfer agreements
- outsourced development agreements
Specific examples of Jim’s experience include:
- Managing patent portfolios for the world’s leading makers of workplace and digital printing solutions; autonomous vehicle control and advanced driver assistance systems; LED lighting; power management solutions; cloud storage and data delivery; and electronic device cleaning products.
- Leading the firm’s patent team for a hospital-based research institution.
- Representing a developer of entertainment content for mixed-reality devices in content production and license agreements.
- Leading patent due diligence for a private equity group’s acquisition of a multinational conglomerate’s business unit, then developing the new company’s patent portfolio, licensing and freedom to operate strategies until the company’s acquisition by a global industrial engineering group.
- Representing sports industry technology companies in patent, IP litigation and technology licensing matters involving baseball swing training technologies and virtual reality sports simulators
- Representing a cloud gaming provider in customer and license agreements with cable TV service providers.
- Representing an NHL legend in developing and licensing a hockey equipment brand; All-Pro NFL players in negotiating name-branded restaurant arrangements; and the heirs of an NBA pioneer in licensing his name for use by a leading shoe company.
Jim has been ranked for more than 10 years in the IAM Patent 1000, and for the second consecutive year on the IAM Global Leaders list, including its inaugural edition, in which clients commented:
- “[Jim] often takes the time to pay a personal visit to our labs and is flawless in his execution when it comes to securing protection for our most advanced inventions. He is the perfect ‘down-the-hall’ colleague, as he is always available for quick consultations.”
- “As a transactional lawyer, [Jim] brings incredible value to an engagement because he is so pragmatic. He’s not an academic type who only thinks of the law – instead he keeps his commercial needs and objectives at the forefront of his mind.”
- Jim is “a repository of trust for a myriad of high-profile innovators” and is noted for “communicating his advice in crystal-clear and concise language.”
Intellectual property is often the lifeblood of a company. As an experienced IP professional and registered patent attorney, Jim keeps you up-to-date with the legal and business aspects of intangible assets on his IP Spotlight blog. Covering topics such as licensing, due diligence, acquisition, compliance and risk management associated with patents, trademarks, copyrights and trade secrets, IP Spotlight provides insight, commentary and tips regarding recent legislation and developments relating to the business of IP.
IP protections for next-generation cybersecurity technologies extend beyond blockchain-based payment systems. Distributed ledger technologies have applications in multiple fields and other network security technologies are equally important, if not more so.
This E-book explores a number of IP trends and strategies for securing a number of cybersecurity assets:
- Intellectual Property Options
- Trends in Patenting Blockchain Technologies
- Defensive Patent Strategies for Blockchain and Distributed Ledger Technologies
- Cybersecurity Patent Strategies vs. Growing Barriers to Software Patents
Before Fox Rothschild
As an electrical engineer in the oil pipeline and electric utility industries, Jim designed and managed construction projects for a variety of power and control systems. Jim also worked in the intellectual property department of a Fortune 500 company and with the Federal Energy Regulatory Commission.
Beyond Fox Rothschild
Jim serves as a mentor to several startup accelerators, including AlphaLab Gear and the Ben Franklin Technology Partners’ TechCelerator. As part of his mentoring, Jim provides group intellectual property training sessions to startups during each program’s cycle. He is also a frequent author and speaker on IP and other issues relating to technology and the law. Jim also serves as Vice Chair of the Board of Directors of WQED Multimedia.
Honors & Awards
- Named to the IAM Patent 1000 list as a leading attorney for both patent prosecution and licensing (2010-2020)
- Named to the list of IAM Global Leaders for both patent prosecution and licensing, Inaugural List (2020) and (2021)
- Named to the Client Choice Report by Lexology (2017, 2019)
- Named an “Intellectual Property Trailblazer” by The National Law Journal (2016)
- Named as one of the leading Intellectual Property attorneys in Pennsylvania by Chambers USA (2016-2020)
- Named to "The Best Lawyers in America" list for Motion Pictures and Television Entertainment Law (2015-2021), Patent Law (2018-2021) and Trademark Law (2020-2021) in Pennsylvania by Best Lawyers