James’ practice focuses on strategic IP counseling and analysis, with a particular emphasis on patent-related matters, to help clients acquire, protect and monetize intellectual property and reduce exposure to infringement. He knows how to make complex issues and difficult subject matter understandable–he teaches patent law and prosecution at two law schools, and is a frequent speaker and author on the topic of patentable subject matter eligibility of computer software. James also is a founding member of Shook’s Digital Health Practice and Internet and Data Security Team, helping clients deal with the ever-changing cyberthreats they face doing business on the internet.
With three degrees in computer engineering and electrical engineering, James brings significant training and research experience to his patent procurement practice, which includes all aspects of preparation and prosecution of U.S. and international patent applications in several diverse technology fields. Much of his practice is in the computer-related arts, including software (e.g., mobile-device apps, applications, online services), telecommunications, health care IT, distributed (cloud) computing, secure computing, user interfaces, computer architecture, business methods and mechanical arts. In addition, James has drafted hundreds of patent applications for machine learning and artificial intelligence technologies.
James has nearly 20 years of experience analyzing patent portfolios for infringement and validity, conducting risk assessment, search and strategic acquisition, due diligence for licensing and assertion, and patent landscape mapping. He has prepared patentability opinions, managed legal and technical teams, and worked closely with product developers to identify and implement patent design-around technologies. His extensive experience in patentable subject matter eligibility of computer software has included analyzing hundreds of 35 U.S.C. § 101 cases before the Patent Trial and Appeal Board, district courts, and the TC 3600 art unit of the U.S. Patent Office (software, healthcare and business methods) to empirically determine successful patent prosecution and litigation strategies for clients. He has presented over a dozen CLEs on 35 U.S.C. § 101 and subject matter eligibility in the US and Europe.
Digital Health: James bring over a decade of experience counseling companies in digital health and wellness technology, including mhealth, apps, AI, software/digital diagnostics, voice recognition, and connected devices. He helps companies implement the best practices for digital from developing internal procedures and educating in-house attorneys and developers to drafting external positions for industry groups and regulatory authorities. He has worked with leading healthcare companies to design and execute digital IP strategies for product protection, risk avoidance, and monetization. His experience includes helping clients to grow and license patent portfolios, advising on trade secret protection for digital, defensive publishing and open-source software, and helping companies to navigate issues from partnering with technology companies.
Cybersecurity: In the rapidly changing field of Internet and data security, James counsels companies on matters involving unauthorized access and computer hacking, counterfeit goods and software (e.g., fake products, apps and websites), computer fraud and abuse. James helps clients dealing with the aftermath of cybertorts and digital crimes, including computer malware, botnet takedowns and phishing schemes. He also is experienced in performing threat assessments, determining attribution, reverse-engineering malware and software applications, evaluating offenders and defendants for compliance with settlements, developing discovery plans and preparing criminal referrals and civil actions.
Teaching/Faculty Appointments: James is on the adjunct faculty of the University of Missouri – Kansas City and Washburn University schools of law, teaching courses in patent law and prosecution. He also teaches continuing legal education (CLE) courses designed for patent attorneys, and is the author and co-author of numerous journal articles. He also has taught courses in electrical and computer engineering.
His technical research has focused on signal processing, embedded systems design and microcomputer architecture. He also has performed research in cybersecurity and technical policy, and has assisted on policy matters at state and federal levels. James received special recognition for developing landmine detection technologies that save an average of one life every three days.
Presentations and Publications
Intro to Artificial Intelligence and Privacy, Summer Program, Hispanic National Bar Association, Vision in Action, Intellectual Property Law Institute, June 9, 2021 (with Catherine Romero).
Digital Due Diligence, CLE Webinar, Association of Corporate Counsel of Chicago, April 15, 2021 (with Jen Schroeder).
Applications of Artificial Intelligence Technologies in Patent Practice: What You Need To Know + Ethical Considerations, CLE Sponsored by The Center for American and International Law, March 2021.
An Update on 101 Patentable Subject Matter: American Axel, TecSec, & Other Recent Decisions, B. Thomas and J. Devaney, Multistate CLE, January 2021.
J. Devaney, S. Gunawardhana, Lischen Reeves, and J. Schroeder, Artificial Intelligence and Cybersecurity in Digital Healthcare, International Comparative Legal Guides: Digital Health 2020, April 2020.
Efficient & Effective Prosecution Strategies: Using Data Analytics For Informed Decision-Making At The Patent Office, Multistate CLE, February 2020.
Technically Speaking: Preparing Your Idea for Patenting, Dublin, Ireland, June 2019.
AI & IP, Intellectual Property Law Institute, May 2019.
Standards Essential Patents & Policy for Artificial Intelligence, Big Data, and Internet of Things, U.S. Dept. of Commerce, October 2018.
Overcoming EPG (Electric Power Group)-Based Rejections Under 101: Strategy Derived From Data Analytics Of The USPTO, June 2018.
The Patent Bar Exam: Overview, Requirements, Preparation, University of Missouri Kansas City Law School, June 2018.
<Ctrl> + <Alice> + <Del> : Patent Subject Matter Eligibility in the Computer Technology Industry, Presented at a Forum of Technology Companies, April 2018.
Deliver Us From Alice: Patent Subject Matter Eligibility in the Shipping Industry, Multistate CLE, IP CLE, February 28, 2018.
Using Technology to Increase Efficiency, Attorney Mentoring and Professional Development Series, October 2017.
Identifying Patentable Software Inventions: Maximizing Likelihood of Obtaining Patent Protection, August 2017.
Subject Matter Eligibility in the Post-Alice Wild West and Strategies Derived From an Empirical Analyses of Over 200 District Court Decisions on 35 U.S.C. § 101, IP CLE, Shook, Hardy & Bacon, Kansas City, Missouri, October 2016.
From Alice to Allowance: A § 101 Clinic for Prep & Prosecution, IP CLE, June 2016.
Fulfilling Legal and Ethical Obligations to Botnet (computer malware) Victims. Digital Crimes Consortium, Vienna, Austria, March 2016.
Alice & Patent Subject Matter Eligibility: Recent Developments in SME and Strategies Developed From Case Studies at the Patent Office, Spring 2016.
Alice & S.M.E. (Update): Where Are We? What’s Working? and What Isn’t?, CLE, February 2016.
Lessons Learned From Alice (Alice Corp. v. CLS Bank International, 134 S. Ct. 2347 (2014)), CLE, February 2015.
Andrew C. Cooper & James B. Devaney, How Deep Does This Rabbit Hole Go? What We Learned About Patent-Eligibility From Alice in 2014, Bloomberg BNA, February 6, 2015.
Alice & Eligible Subject Matter [Section] 101, CLE, October 2014.
Responding to Alice 101 Rejections: An Analysis of Section 101 Jurisprudence and Model Outlines for Responding to the Patent Office, October 2014.
Subject Matter Eligibility and the New USPTO Examination Guidelines, CLE, University of Missouri Technology Transfer Summit, August 2014.
Look Ma, No
Hands Claims! Changes in the Patent Filing Laws Due to the Patent Law Treaty Implementation Act, CLE, January 2014.
Stealing the Show: Legal and Technical Aspects of Cross-Site Scripting Abuses, Digital Crimes Consortium, Barcelona, Spain, February 2013.
Third-Party Preissuance Submissions (3PPS): Not So Fast! A New Program Under the America Invents Act Creates Opportunities for Third Parties to Impact Patent Prosecution, CLE, January 2013.
IP for Engineers & Entrepreneurs, University of Missouri (March 2010, March 2011, March 2012).
J. Stanley, K. C. Ho, P. D. Gader, J. N. Wilson, and J. Devaney, EMI and GPR Algorithm Advancements for Wand Unit Landmine Detection Operating in Discrimination Mode, J. Circuits, Systems Signal Processing, vol. 26, pp. 165-191, February 2007.
J. Stanley, K. C. Ho, P. D. Gader, J. N. Wilson and J. Devaney, EMI and GPR Algorithm Advancements for Wand Unit Landmine Detection Operating in Discrimination Mode, Circuits, Systems and Signal Processing, December 2005.
Stanley, Ronald J., Dominic K. Ho, Paul D. Gader, Joseph N. Wilson, James B. Devaney, Advances in EMI And GPR Algorithms in Discrimination Mode Processing For Handheld Landmine Detectors, Proceedings of SPIE, vol. 5415, pp 874-882, September 2004.
Ho, K.C., P.D. Gader, and J. Devaney, Locate Mode Processing for Handheld Landmine Detection, Proceedings of SPIE, vol. 4742, pp 356-366, April 2002.