Jim is a member in McDonald Hopkins Intellectual Property Department and a strategic intellectual property advisor who helps clients develop and protect the value of their global intellectual property portfolios. His practice encompasses all components of intellectual property – domestic and foreign patents, trademarks, copyrights and trade secrets – with a primary focus on businesses seeking market penetration and growth in the use of computer software, hardware, electronics, automation, and internet technologies.
A registered patent attorney, Jim is highly experienced in patent clearance and patentability counseling, as well as patent application preparation and prosecution before the U.S. Patent and Trademark Office. He regularly advises clients concerning corporate transactions, licenses and transfers related to various components of their intellectual property portfolios. Jim also has extensive experience enforcing and defending clients’ intellectual property rights in litigation involving numerous technologies before federal courts across the country.
Before he started his legal career, Jim obtained valuable industry experience as a software engineer and systems analyst. He gained valuable insight into the vital business considerations and needs of companies that develop and market high-tech software and hardware products. His practical and legal background enables him to serve as a reliable business and legal advisor who develops cost-effective and competition- focused strategies to achieve their objectives.
A substantial portion of Jim’s practice is devoted to protecting and developing comprehensive intellectual property portfolio strategies for communications, AI, data and system security and reliability, mobility, autonomous, navigation, controls, infotainment, data analysis, and other technologies in various industry sectors, including entertainment and streaming systems, automobiles and heavy equipment, healthcare devices and systems, medication delivery systems, pharmacy prescription-servicing systems, direct and online order fulfillment systems, automated vending systems, consumer electronics and products, and other businesses and industries. He has also acted as a legal testifying expert in a patent infringement action.
Jim is an adjunct faculty member of the University of Illinois – Chicago School of Law, where he teaches substantive U.S. patent law. Jim further teaches Chinese patent examiners and re-examiners, as well as groups of Chinese IP attorneys, U.S. patent law topics within a program he helped create through The John Marshall Law School Chinese IP Resource Center.
He has also been listed with Best Lawyers and Chambers for patent law for several years. He has served on the board of managers and various committees of IPLAC and acted as the Vice President of the IPLAC Educational Foundation. Jim is a contributing author for Patent Claim Construction in the Federal Circuit and has been for many years. Jim has also sat on the AIPLA Quarterly Journal Editorial Board. He has also been a judge for the History Channel’s Modern Marvels Invent Now Challenge. Jim is often quoted in the press on intellectual property law matters.
Jim earned his J.D. from the University of Illinois – Chicago School of Law in 1994 and his B.S. in Computer Engineering from the University of Illinois at Urbana-Champaign in 1990.