Thomas James

Thomas A. James is an associate and intellectual property lawyer with Foley & Lardner LLP based in the firm’s Chicago office where he is a member of the IP Litigation Practice.

Tom has a diverse IP practice with a particular focus on high-tech patent litigation and licensing. His experience includes litigating and monetizing patents in the semiconductor and telecommunications spaces as well as conducting and overseeing pre-suit/pre-acquisition due diligence of patent portfolios. Tom also drafts responses and performs technical due diligence in patent post-issuance proceedings.

In addition, Tom prepares and prosecutes patent applications primarily related to the field of electrical engineering, advancing and protecting the value of the clients’ technologies. He also regularly conducts invalidity analysis.

Tom began his intellectual property law career at the U.S. Patent and Trademark Office where he served as a patent examiner in the field of electrical engineering for over four years. While there, he negotiated solutions to advance patentability and expedite prosecution of patent applications. After leaving the USPTO, Tom gained experience in the transactional IP space where he helped advise clients regarding potential patent acquisitions and sales, identifying the strengths and weaknesses of their current patent portfolios.

Drawing on his electrical engineering background, Tom has served clients ranging from the individual inventor to Fortune 50 companies in a variety of industries and technologies including:

• Semiconductors
• Telecommunications
• Computer software
• Image analysis
• Advanced automotive electronics
• Streaming media
• Biomedical technologies
• E-commerce
• RFID technologies
• Fleet management
• Watermarking and fingerprinting
• Device connectivity

Tom’s experience at the USPTO, and previously as a teaching assistant helping undergraduates develop hardware and software solutions to engineering problems, honed his ability to effectively communicate complex technical information in easily understandable terms.

Presentations

• Moderator, “Trade Secrets Litigation at the ITC with ITC Judge Cameron Elliot,” Intellectual Property Association of Chicago (IPLAC) (April 8, 2021)
• Presenter, “Bill and Tabitha Make Decisions About Intellectual Property,” University of North Dakota College of Mines & Engineering (January 28, 2021)
• Co-presenter, “Trade Secret Misappropriation: When and How to Take Action,” AIPLA Corporate Practice Committee (November 17, 2020)
• Presenter, “To Delete or Not to Delete? Minimizing the Landmines of Employees Who Bring Trade Secrets With Them,” AIPLA Corporate Practice Committee (September 29, 2020)
• Presenter, “To Delete or Not to Delete? Minimizing the Landmines of Employees Who Bring Trade Secrets With Them,” Dallas Bar Association webinar (June 23, 2020)

Publications

• Co-author, “Federal Circuit Affirms Invalidation of Digital Camera Patent as Ineligible Under § 101,” Business Law Today, American Bar Association (August 2021)
• Co-author, “Trade Secrets: To Delete or Not to Delete,” Paper presented at the American Intellectual Property Law Association Spring Meeting (May 2020)

Professional Memberships and Affiliations

• American Bar Association
  • Law Practice Division
  • Young Lawyers Division
• American Intellectual Property Law Association
  • Patent Litigation Committee
    • Model Patent Jury Instructions Subcommittee
• Intellectual Property Law Association of Chicago
  • Litigation Committee

Education

• DePaul University College of Law (J.D., 2018)
  • Awarded a Dean’s scholarship
• University of North Dakota (B.S., 2010)
  • Electrical Engineering
  • Society for Engineering and Entrepreneurial Development, president/founder
  • Elected as vice president, Student Chapter, Institute of Electrical and Electronics Engineers
  • Voted in as a member, Dakota Venture Group
  • Co-led a multidisciplinary engineering team that designed and delivered a lunar rover which participated in NASA’s Lunabotics Mining Competition

Admissions

• Illinois
• U.S. Patent and Trademark Office