Overview
James De Vellis is a partner and intellectual property lawyer with Foley & Lardner LLP. He is the chair of the Intellectual Property Department in Foley’s Boston office and practices in the area of intellectual property, with a particular focus on patent portfolio development, related counseling, and post-grant practice, including inter partes reviews. James is a member of the firm’s Electronics and Patent Office Trials Practices. He is also a member of the Automotive and Technology Industry 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. James is active in the areas of internet services, voice-based devices, seismic data detection and analysis, electric vehicle technology, batteries and battery system management, autonomous technology, medical devices, and other innovative spaces.
James has experience in foreign jurisdictions to complement his U.S. patent portfolio development practice. James 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, James was employed as an electrical engineer for a major brushless DC disk drive motor manufacturer.
Representative Experience*
- Developed and managed the patent portfolio of a multinational corporation that provides Internet-related products and services.
- Developed and managed the patent portfolio of a corporation that manufactures electric vehicles and develops related technologies.
- 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 medical device manufacturer in the field of automated external defibrillator devices.
- 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.
Recognition
In 2015, The Legal 500 recognized James for his patent prosecution work.
Education
James earned his law degree from Northeastern University School of Law (J.D., 2003). He earned his bachelor's degree (B.S.E.E., 1998) from the University of Connecticut.
Admissions and Professional Memberships
James is a member of the Boston Patent Law Association, the American Intellectual Property Law Association, the New England Canada Business Council, and various other organizations.
Mr. De Vellis is admitted to practice in Massachusetts and before the U.S. Patent and Trademark Office, U.S. Court of Appeals for the Federal Circuit, U.S. Court of Appeals for the First Circuit, and the U.S. District Court of Massachusetts.
Languages
James is conversant in Italian, and has limited Portuguese understanding.
Selected Publications and Presentations
- “Patent Protection for Canadian Entrepreneurs” speaker, Centre d’entreprises et d’innovation de Montreeal (CEM), Montreal, Canada, May 2014
- “Patent Protection for Canadian Entrepreneurs” speaker, Quebec International Economic Development Center, Quebec City, Canada, May 2014
- "Key Enabling Technology Patents: Effective Portfolio Development for Protecting Your Innovations," panel moderator and organizer, Nanotech Italy 2013 Conference, November 2013
- "Preparing US Patent Applications for European Prosecution" speaker, Boston Bar Association presentation, June 2013
- "New Options, Pitfalls and Strategies Under the America Invents Act" panelist, User-Driven IP 4.0 Conference, October 2012
- "Competing in the New Patent Era" panelist, Nanomanufacturing Summit and NanoBusiness Conference, September 2012
- "Third Party Submissions Under the American Inventions Act: The Minor Amendment with Major Impact" speaker, Boston Bar Association, Intellectual Property Litigation Committee, June 2012
- "(Re)Examining Innovation in the States," author, New England Canada Business Council Connections Newsletter, November 2011
- "Reexamination: Past and Future," panelist, Boston Patent Law Association Contested Matters Committee Seminar, October 2011
- "The Value of Patent Reexaminations to Start Ups and Small Businesses," author, IP Frontline, June 2011
- "Reconsider Recapture in a Patent Reissue," author, Law 360, June 2011
- "Leveraging the Patent Reexamination," guest speaker, IP Issues with Suffolk University Law School on iTunes, May 2011
- "Leveraging the Patent Reexamination," author, Intellectual Property Owners Association, December 2010
- "Leveraging the Patent Reexamination," author, Law360, September 2010
- "Patenting Industry Standards: Balancing the Rights of Patent Holders with the Need for Industry-Wide Standards," author, American Intellectual Property Law Association - Quarterly Journal 31 AIPLA Q.J. 301 (2003)
* To reflect his breadth of experience, the foregoing includes representations by James prior to joining Foley.