Patent Procurement | Post-Grant Proceedings
Mr. James Harris, Principal, has almost 30 years’ experience helping clients identify, protect, and derive value from their intellectual property. Having worked as an engineer inventing digital signal processing systems, in-house counsel for small, mid-size, and large technology companies, and outside counsel representing a diverse range of clients, Mr. Harris brings a uniquely well-rounded perspective to his interactions with inventors and business leaders. His patent experience spans the breadth of electrical, computer, and software engineering, and includes mechanical inventions as well.
Many clients have relied on Mr. Harris to work directly with their inventors to identify their valuable intellectual property at the earliest possible stage of product development and develop a strategy to protect key inventions in a new product line. Some areas where Mr. Harris has helped clients develop significant new patent portfolios include semiconductor processing, parallel processors, high-speed network routers, image sensors, computer memory systems, audio and video digital signal processing, analog drivers and amplifiers, and computer-aided detection of cancer in medical imaging.
Mr. Harris also has extensive experience counseling clients with existing patent portfolios in order to unlock potential for licensing and cross-licensing with competitors, and/or increase the valuation of companies for acquisition. He has helped clients identify their patents that are in use in the market, identify and claim patentable but not-yet-claimed subject matter in their existing patent applications, and create compelling licensing materials for licensing programs. He has also worked together with counsel in other jurisdictions to obtain patent protection for important inventions in dozens of countries. Mr. Harris has used these skills to add significant business value for large patent portfolios in memory systems, routers, mobile devices, and data networks, to name a few.
Mr. Harris’ practice extends beyond patent procurement and portfolio development. He has on multiple occasions successfully defended clients accused in litigation of patent infringement by much larger competitors, prepared non-infringement and invalidity opinions, worked to defend his own clients’ patents in post-grant proceedings in both the United States and Europe, and represented clients engaged in licensing negotiations. The experience gained through involvement in the entire patent life cycle informs Mr. Harris’ approach when preparing and prosecuting patent applications, as he treats every patent application as one that could someday be a critical client asset.
- Southern Methodist University (J.D., magna cum laude)
- Brigham Young University (M.S., 3.96/4.0 GPA)
- Brigham Young University (B.S., magna cum laude)
Admitted in TX and USPTO only; practice is limited to matters and proceedings before federal courts and agencies