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  3. James G. Morrow

James Morrow is a registered patent attorney and shareholder in Reinhart's Intellectual Property Practice with 30 years of experience in IP law and counseling. James works primarily with mid-market clients to rationalize their IP management with their business goals by advising them on: internal IP development (e.g. patent, trademark and copyright filing, prosecution and maintenance), IP acquisition and monetization (e.g. purchasing, selling and licensing), IP management (e.g. negotiation and management of IP related agreements such as NDAs, development agreements, product and software licensing agreements and supply agreements,) and IP risk management (e.g. infringement threat assessment, litigation management, and US Patent Office invalidation processing).

James advises clients in all aspects of IP management from suppler contracts, customer contracts, dispute resolution, and copyrights. As an IP attorney who is also a licensed Professional Engineer in Wisconsin, James approaches IP law from a unique perspective with his knowledge of not only the legal side of the industry but also the technological side. This dynamic understanding and client-driven approach allows clients to cost-effectively manage their IP needs. He has considerable in-depth experience and success which is reflected in his high retention rate among clients with his two longest clients involved in a 15 year on-going working relationship.

Identifying as a problem solver who is solution driven not means driven, he understands that clients come to him when they have needs, problems or wants, and he is driven to find solutions to those problems, answers to those wants and fulfillments to those needs. One thing remains consistent throughout his career: James works tirelessly for his clients so that they can return their focus on what is important - their business or product.

James primarily serves clients in the following areas:

  • Medical devices

  • Processing Equipment and control software.

  • Metal packaging

  • Flexible packaging

  • Plastic processing

  • Lighting systems, lighting and power supplies

  • DNA Testing and Sequencing equipment and processing

  • Industrial and residential power distribution products

  • Data center power distribution and communications

  • Motor controls

  • Printing systems

Education

  • J.D., with honors, University of Wisconsin Law School
  • B.S.M.E., with high honors and distinction, University of Wisconsin

Bar Admissions

Arizona | Illinois | Wisconsin

Court Admissions

  • United States Supreme Court
  • U.S. Patent and Trademark Office
  • U.S. District Court, Eastern District of Wisconsin
  • U.S. District Court, Western District of Wisconsin
  • U.S. District Court, Northern District of Illinois

Matters

  • Technology licensing involving the allocation of ownership and licensing rights in patents, copyrights, trade secrets and trademarks

  • US Patent Office Inter Parte Reviews, filed and won 3 of the first 10 Inter Parte Reviews (IPR2012-00006, IPR2012-00007, IPR 2012-00011)

  • Prepared, filed and supervised the preparation and filing of over a thousand patent applications

  • Patent litigation in the areas of power distribution products, packaging equipment, power electronics, food processing equipment, DNA sequencing, battery technology

  • Patent reexaminations

  • Negotiation, Arbitration and Mediation of intellectual property issues and disputes

  • IP risk assessment studies including opinions

  • IP counseling in preparation for and during merger, acquisition and divestiture transactions

Honors & Affiliations

Honors

  • Best Lawyers’ 2019 Patent Law “Lawyer of the Year”

  • Best Lawyers in America (Copyright Law; Litigation-Intellectual Property; Litigation-Patent; Patent Law)

  • Chambers USA: America's Leading Lawyers for Business (Intellectual Property)

  • Wisconsin Super Lawyers

  • Recognized by The Legal 500 US in advisory and transactional trade secret matters

  • Wisconsin Top Rated Lawyer Martindale-Hubbell AV® Preeminent Peer Review Rated

  • Works with corporate organizations to help develop attorney skills and educate employees (i.e. marketing, engineering, strategic planning employees) to understand the basics and timing for IP protection

  • Adjunct professor of law at Marquette University Law School, taught, and judged moot court competitions

Affiliations

  • U.S. Patent Bar Association

  • American Intellectual Property Law Association

  • Licensing Executives Society

  • American Society of Mechanical Engineers

  • Milwaukee Bar Association

News & Insights

Presentations

  • Intellectual Property, Basic Types and Attributes

  • Legal/Intellectual Property Protection for Technology

  • Protecting Your Proprietary Assets, Strategies to Safeguard Corporate Intellectual Assets