Ranked in 1 Practice Areas
3

Band 3

Intellectual Property

Pennsylvania

9 Years Ranked

About

Provided by James Singer

USA

Practice Areas

Jim is passionate about technology. He combines that passion with years of experience to help clients develop legal strategies that increase value and reduce risk around their most important intellectual property assets.

Jim is Co-Chair of the firm’s Technology Practice Group and former Chair of the Intellectual Property Department. He is recognized as a global thought leader in patents and technology intellectual property transactions. Jim also leverages his previous experience as an engineering project manager to ensure that clients receive practical advice, clear communications, responsive support and efficient service.

Jim draws on a deep well of experience to support clients in: patent strategies, including securing patents for innovative technologies, designing products that avoid infringement of competitors’ patents, and implementing strategic license opportunities; complex technology transactions, software and platform licensing, technology-focused supply chain agreements, and university technology transfer agreements; corporate brand protection and personal name, image and likeness (NIL) licensing; and IP due diligence in mergers and acquisitions, and helping clients prepare for due diligence activities.

Jim also supports the firm’s IP litigation teams when clients are involved in disputes.

Jim’s patent and transactional experience spans a range of technologies, including: electronic devices; computer systems and software; autonomous vehicles and other robotic systems; virtual and augmented reality systems; digital media delivery systems; printing and packaging systems; lighting systems; power generation and distribution equipment; wireless communication technologies; medical devices; data security and encryption technologies; blockchain technologies; automotive components; consumer products; and food and beverage production systems.

In addition, Jim has guided the development of IP portfolios that led to successful exits through acquisition by technology leaders, including Amazon, Autodesk, Eaton, Ford, Google, Microsoft, Motorola, Nielsen, Proofpoint, Sandvik, Signify and Xerox.

Experience

Specific examples of Jim’s experience include:

Managing patent portfolios for the world’s leading makers of workplace and digital printing solutions; autonomous vehicle control and advanced driver assistance systems; LED lighting; power management solutions; cloud storage and data delivery; and electronic device cleaning products.

Developing template license agreements and negotiating customer-specific agreements for regional banks, telecommunication service providers, data storage and file sharing services, and vendors of industry-focused systems, such as car wash equipment, waste management equipment, data security solution providers and many other solutions.

Leading the firm’s patent and licensing teams for a hospital-based research institution.

Representing a developer of entertainment content for mixed-reality devices in all aspects of its business, including content production and license agreements, agreements with creative talent and contracts with presenting venues.

Leading IP due diligence for a private equity group’s acquisition of a multinational conglomerate’s business unit, then developing the new company’s patent portfolio, licensing and freedom to operate strategies until the company’s acquisition by a global industrial engineering group.

Representing sports industry technology companies in patent, IP litigation and technology licensing matters involving baseball swing training technologies and virtual reality sports simulators.

Representing a cloud gaming provider in customer and license agreements with cable TV service providers.

Representing an NHL legend in developing and licensing a hockey equipment brand; All-Pro NFL players in negotiating name-branded restaurant arrangements; and the heirs of an NBA pioneer in licensing his name for use by a leading shoe company.

Career

As an electrical engineer, Jim designed and managed the installation and maintenance of power and control systems in the oil pipeline and electric utility industries. Jim also worked in the intellectual property department of a Fortune 500 company and with the Federal Energy Regulatory Commission.

Jim serves as a mentor to several startup accelerators, including AlphaLab Gear and the Ben Franklin Technology Partners’ TechCelerator. As part of his mentoring, Jim provides group intellectual property training sessions to startups during each program’s cycle. He is also a frequent author and speaker on IP and other issues relating to technology and the law. Jim has also served on the boards of several innovative non-profits, including most recently as Vice Chair of the Board of Directors of WQED Multimedia.

Professional Memberships

Penn State Alumni Association, Allegheny County Chapter: Past President | Pittsburgh Intellectual Property Law Association: Committee Chair, Inventor of the Year Award | Leadership Development Initiative of Leadership Pittsburgh, Inc.: Leadership OnBoard graduate | WQED Multimedia: Board of Directors, Honor Board Member, former Vice Chair

Personal

University of Pittsburgh School of Law (J.D.) | Pennsylvania State University (B.S., Electrical Engineering)

Expert in these Jurisdictions

Bar Admissions: Pennsylvania, U.S. Patent & Trademark Office

Chambers Review

Provided by Chambers

USA

Intellectual Property - Pennsylvania
3
Band 3

James Singer of Fox Rothschild advises clients from highly technical industries on complex patent prosecution and protection matters. He has additional capability in copyright and trademark mandates.

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