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James Skelley is a technology attorney operating primarily out of Silicon Valley, but with connections in Southern California and the Greater Boston region. ¬†James has provided patent prosecution (design and utility), licensing, copyright, trademark, open source, and strategic technology counseling to clients ranging from biotech firms to space systems and nuclear reactors (though his first patent application was for a pogo stick). When he’s not busy working with clients, James researches legal and technical issues of public concern and (with the assistance of Leopold the LawMux) provides the preliminary results in the LawMux KnowledgeBase. ¬†When he’s not working, James is either climbing, biking, at the gym, or illustrating children’s books.

Licenses:
  • California Attorney: #257829 (~8 years)
  • District of Columbia Attorney: #1014986 (~2 years)
  • USPTO Reg. No.: #59458 (~10 years)
Technical Background:
  • MIT Course 6-2, B.S., M.Eng.
  • Machine Vision Research – Center for Biological and Computational Learning MIT
  • Experienced in OpenCV, OpenGL, Mesa, Unix, Caffe, Torch, Windows, MacOS, Python, Perl, CAML, LISP, C/C++/C#, Objective-C, Swift, Java, Javascript, x86 Assembly, PHP, Visual Basic, SQL, Matlab / R
  • Computational Biology (Protein Folding, Numerical Analysis, CRISPR/Cas9 Applications)
  • Basic Quantum Mechanics, Quantum Electrodynamics, and Quantum Field Theory
  • Special and General Relativity
  • Cryptography and Cryptanalysis – Public/Private Key
Legal Background:
  • Boston University School of Law
  • Exchange Student – Oxford University – Harris Manchester College
  • Editor in Chief – Boston University Journal of Science and Technology Law
  • 7+ Years Experience in 500+ Attorney Law Firms
  • Experience with stock purchase agreements, term sheet negotiations, mergers, joint ventures, copyright, and patent portfolio acquisitions primarily in the biomedical and software markets
  • Patent Experience – appeals, reissues, ex parte reexamination, Alice- Mayo framework analysis, inter partes review, trans-AIA practice, Track One rapid issuance / provisional rights strategies, and portfolio review
  • Patent and non-patent experience (e.g., foreign contractors) with the Defense Federal Acquisition Regulation Supplement (DFARS) as concerns Department of Defense (DoD) research grant compliance as well as experience with Bayh-Dole compliance and reciprocity
Charity Work:
  • Previous Board Member – San Diego Science Alliance
  • FIRST Robotics Volunteer
Patents
  • 10+ years practicing before the USPTO / 7+ years in Tier-1 Law Firms
  • Utility Patent Drafting and Prosecution:
    • Mechanical / Electrical – Drones, Medical Devices, Drilling Equipment, etc.
    • Software – Machine Vision, Deep Learning, Databases, etc.
    • Quantum Physics – Materials Science, Quantum Computing, Laser Systems, etc.
    • Semiconductor – Deposition / Packaging
    • Wireless – CDMA Variants, Antenna/Waveguide Design, etc.
  • International Prosecution – PCT and Foreign Office Filing Strategies
    • Patent Prosecution Highway experience in multiple foreign offices (e.g., Israel, EPO, JP, and CN)
  • Litigation Strategy:
    • Inter-Partes Review
    • Reexamination
    • Pre-Litigation Strategy Development
  • Design Patent Drafting and Prosecution – In-House Illustration and Animation Drafting
Transactions
  • 6+ years experience drafting joint research and licensing agreements, including agreements between Fortune 500 Companies
    • Medical Device
    • Robotics
    • Chemotherapy Agents
    • Deep-Learning Database Development and Exchange
  • IP Oversight: Regularly retained alongside large law firm teams to review IP deal aspects independently
  • California Attorney – Familiarity with UCC, Antitrust, and other relevant case law
Due Diligence
  • Portfolio assessment and valuation – Creator of backward-induction software valuation tools (demonstrations available upon request)
  • Internal IP Development – Design and help implement internal IP generation, selection, and protection programs
  • Internal Software Management – Establish Open Source protocols and in-take procedures to mitigate risk and facilitate future due diligence
Software
  • Open Source – Drafting, Market Assessment, Interpretation, Compliance
  • Post-Alice/Bilski 101 Analysis – Monitor and compensate for recent legal trends in patent prosecution and trade secret management
  • Active developer (projects written within the last 2 years) in:
    • C/C++/C#
    • Objective-C (in-house iPhone docketing software)
    • Swift (in-house iPhone PACER legal search)
    • Java (in-house document management system)
    • Javascript (JQUERY / Node.js / Protoype.js / HTML5),
    • x86 Assembly (decompilation and reverse-engineering analysis)
    • PHP / Ruby / SQL (website development)
    • Visual Basic (Macros for legal drafting and private practice management)
    • Matlab / R (Physics and Computational Biology Modeling)
    • OpenCV (Personal robot)
    • OpenGL / Mesa (Visualization suite for client Inverse Kinematic tool)
    • Caffe / Torch (Deep Learning vs SVM Stress Testing)
    • Python
    • Perl (Patent portfolio analysis tools)
    • CAML
    • LISP
Trademark
  • Trademark design and prosecution