James De Vellis is an intellectual property lawyer focusing on patent portfolio development, related counseling, and post-grant practice. He is a partner in the firm’s Electronics and Patent Office Trials Practices and chair of the Intellectual Property Department in Foley’s Boston office. He is also a member of the CleanTech, Automotive, and Innovative Technology Sector Teams, as well as the firm’s Environmental, Social, and Governance (ESG) Team.
James’ strategic patent portfolio development practice includes thoughtful preparation and worldwide prosecution of patent applications to build effective IP portfolios. He helps innovators secure both offensive and defensive patent protection, enabling them to operate in their intellectual space on their terms.
James practices to advance clients’ business objectives by developing sustainable patent portfolios and by acting as a check on competitors’ patents that encroach beyond their appropriate boundaries. He is active in the areas of electric vehicle technology, batteries and battery system management, autonomous technology, medical devices, AgTech, clean water tech, power grid management, internet services, voice-based devices, seismic data detection and analysis, and other innovative spaces.
James has experience in foreign jurisdictions to complement his U.S. patent portfolio development practice. He also prepares non-infringement and freedom-to-operate opinions for industry leaders, represents clients in appeal proceedings before the U.S. Patent and Trademark Office, and guides clients through European patent portfolio development matters. James has previously lived and worked as a U.S. patent lawyer in Europe for an Italian firm, where he focused on worldwide patent procurement and portfolio development.
Prior to entering intellectual property law, he was employed as an electrical engineer for a major brushless DC disk drive motor manufacturer.
Representative Experience
- Developed and managed multiple large patent portfolios and related strategy for multiple corporations in the electric vehicle and autonomous vehicle space.
- Developed and managed the patent portfolio of a multinational corporation that provides Internet-related products and services, including voice-activated products.
- Developed and managed the patent portfolio of a cleantech corporation that provides power grid management and related technologies.
- Developed and managed the patent portfolio of a cleantech corporation that manages water treatment facility control systems.
- Developed and managed the patent portfolio of a cleantech corporation that manages second life energy storage and control systems.
- Developed and managed the patent portfolio of multiple medical device corporations that develop neurological simulation devices, orthopedic surgical devices, joint replacement devices, automated external defibrillators, and smart wearable devices, among others.
- Developed and managed the patent portfolio of multiple AgTech corporations that develop farm management software and related products.
- Developed and enhanced the patent portfolio of a corporation that provides construction and specialty services to the telecommunications industry.
- Counseled a telecommunication company regarding a network switching and routing patent portfolio through a series of reexamination proceedings conducted in parallel with both multiple patent litigations and continued patent prosecution.
- Developed and enhanced the patent portfolio of a power supply company in the fields of uninterruptible power supplies, voltage converters, data centers, and communications within and between data centers.
- Counseled a machine vision innovator regarding image registration technology through a series of reexamination proceedings.
- Developed and enhanced the patent portfolio of a telecommunications company in the field of mobile-to-mobile network transmissions involving tandem free signal oscillation, lawful interception of data in broadband networks, end user location related data interception, personalized ring back tone interception over mobile networks, and sector antennas.
- Developed and enhanced the patent portfolio of a video processing company in the field of interlaced video motion detection, block artifact removal, and video signal processing.
Awards and Recognition
- Foley’s Carl Hitchner Mentor of the Year Award (2022)
- The Legal 500, patent prosecution (2015)
Affiliations
- Member, Boston Patent Law Association
- Member, American Intellectual Property Law Association
- Board of Directors, WorldBoston
- Member, Canadian Entrepreneurs of New England
- Member, New England Canada Business Council
- IP Mentor for Canadian Technology Accelerator program, Foresight CleanTech Accelerator, District 3 Innovation Hub, SVG Ventures Thrive AgTech Accelerator, Greentown Labs, among others
Presentations and Publications
- Presenter, “IP Strategy Workshop: Using Your IP to Achieve Business Objectives,” Dynamo Energy Hub April Founders Forum, April 18, 2024
- Moderator, “Great Decisions | Energy Geopolitics,” WorldBoston, December 13, 2023
- Presenter, “Protecting Your Intellectual Property,” Canada/Ontario Autotech Canadian Technology Accelerator, October 10, 2023
- Presenter, “Climatetech Canadian Technology Accelerator – Intellectual Property Session,” Climatetech Canadian Technology Accelerator, October 4, 2023
- Presenter, “Cleantech IP Strategy and Development to Achieve Business Objectives,” Greentown Labs, October 3, 2023
- Moderator, “Commercial Opportunities for Hydrogen to Serve Hard-to-Abate Industrial Applications,” Infocast Hydrogen Hubs: Building a Financeable Value Chain, August 30, 2023
Languages
- Italian (conversant)
- Portuguese (basic)
Takeaways From USPTO's AI-Assisted Invention Guidance
IP Challenges in the Energy Transition
New Hydrogen Regulations Show The Need For IP Protections
On The Edge: Lessons In Patent Litigation Financing
Energy Sector Takeaways From Biden's AI Executive Order
