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Overview

Jim focuses his practice in the field of intellectual property. A registered patent attorney and professional engineer, Jim's practice focus is on U.S. and international patent and trademark applications, patent and trademark infringement and litigation, licensing and unfair competition. Jim has assisted companies in protecting and enforcing their intellectual property assets globally and in defending against charges of infringement. He has also assisted companies from outside the United States in protecting their intellectual property assets in the United States. Jim also helps companies license their intellectual property assets to others or license intellectual property assets from others.

Career Highlights

Representative Cases and Achievements

  • Registered Patent Attorney, 1990, Reg. No. 34,589
  • Registered Professional Engineer, Ohio, 1984
  • Adjunct Lecturer, Louis D. Brandeis School of Law, University of Louisville: Patent Law, Intellectual Property Law,  Internet Law, Patent Practice and Procedure, Patent Litigation

Awards

  • Selected for inclusion in Managing Intellectual Property, IP Stars, 2013-2018
  • Selected for inclusion in Chambers USA: America’s Leading Lawyers for Business, Intellectual Property, 2015 - 2018
  • The Best Lawyers in America® Louisville Patent Law "Lawyer of the Year", 2018
  • Selected for inclusion in The Best Lawyers in America® in the field of Patent Law, 2007-2019
  • Named to Louisville Magazine “Top Lawyers” List in the area of Patent Law, 2016
  • Selected to Kentucky Super Lawyers, 2007

Affiliations

Professional Affiliations

  • Kentucky Bar Association
  • Louisville Bar Association, Intellectual Property Section: Chair 1999, Vice-Chair 1998
  • American Intellectual Property Law Association
  • International Trademark Association
  • National Society of Professional Engineers
  • Kentucky Society of Professional Engineers

Military Service

  • United States Air Force, 1968-1988 Communications Engineer 1974-1988 Radar Maintenance, 1968-1972

Media

Contributions & Published Works

  • "Some Business Methods Can Earn Patent Protection," Business First, December 4, 2009
  • "Who Owns an Employee's Inventions and Writings?," Business First, May 30, 2008
  • "Discuss Patent Infringement, Validity Issues With an Attorney," Business First, April 13, 2007
  • "Research Doing Business in China," Business First, December 23, 2005
  • “A – Best Mode; B – Meilleure Manière; C - 最佳的方式; D – Beste Ausführungsform,” TerraLex Intellectual Property Newsletter, 12th edition, October 2005
  • "Asserting and Reacting to Infringement Claims," GDM Law Letter, co-author, Issue 2, April 2005
  • "More Patent and Trademark File Histories Available on USPTO.GOV," TerraLex Intellectual Property Newsletter, 11th edition, April 2005
  • "Avoiding Claims of Willful Patent Infringement After Knorr-Bremse," Associated Industries of Kentucky's Kentucky Journal of Commerce and Industry, March 24, 2005
  • "Researching Patent Applications is Critical Step," Business First, December 3, 2004
  • "All Patents Are Not Created Equal," The Courier-Journal, February 9, 2003
  • "Beware Patent Invoices That Appear Official," The Courier-Journal, November 3, 2002
  • "Patented Invention Could Infringe on Other Patents," The Courier-Journal, June 2, 2002
  • "Patent Applications Will Go Public," The Courier-Journal, December 17, 2000
  • "Patent Rights are Country Specific," GDM Law Letter, June 2000
  • "International Patent Options," The Courier-Journal, June 22, 2000
  • "Patent Pending," The Courier-Journal, January 16, 2000
  • "Ownership and Protection of Intellectual Property - Do You Need an Employer/ Employee Agreement?" GDM Law Letter, December 1999
  • "Holders of Trademarks Can Seek INTERNET Name," The Courier-Journal, August 29, 1999

News

Events

Presentations

  • "Intellectual Property Law Overview," Kentucky Society of Professional Engineers, 2016, 2017
  • “Website Issues for Engineers,” Kentucky Society of Professional Engineers, 2013
  • "Intellectual Property Issues for Engineers," Kentucky Society of Professional Engineers, 2012
  • "Patent Law Update," Louisville Bar Association, 2010
  • "Patent Prosecution Issues for In-House Counsel," Louisville Bar Association, 2009
  • "[Im]Proper Patent Marking," Louisville Bar Association, 2008
  • "International Contracting Issues" and "Overview of United States Patent Litigation and ITC Section 337 Investigations," WTO and Western China – Chongqing Forum, Chongqing, China, 2007
  • "Important Differences in Intellectual Property Law in the United States and China for Chinese Inventors and Brand Owners," WTO and Western China – Chongqing Forum, Chongqing, China, 2006
  • "IP Issues for Technical Professionals," Legal Issues for Kentucky Professional Engineers and Land Surveyors Seminar, 2005
  • "What Can USPTO.GOV Do For You? – Patent and Due Diligence Searching," Louisville Bar Association, 2005
  • "Patents and Packaging," Louisville Bar Association, 2003
  • "What's New In International Patent Law," Louisville Bar Association, 2003
  • "Patent Law Update," Louisville Bar Association, 2002
  • "Patent Practice in Light of Festo," Louisville Bar Association, 2001
  • "International Patent Protection," Louisville Bar Association, 2000

Services

University of Kentucky, B.S., Mathematics, 1968
Air Force Institute of Technology, B.S.E.E., 1974
Webster College, M.A., Government, 1978
University of Dayton, 1989
University of Louisville, J.D., cum laude, 1991

  • Kentucky, 1991
    U.S. Patent and Trademark Office, 1990
    U.S. District Court, Western District of Kentucky
    U.S. District Court, Eastern District of Kentucky
    U.S. District Court, Southern District of Indiana
    U.S. District Court, Northern District of Illinois
    U.S. District Court, District of Colorado
    U.S. Court of Appeals for the Sixth Circuit
    U.S. Court of Appeals for the Federal Circuit
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