JAMES (JIM) WOODS’s practice includes patent prosecution, patent program development, portfolio building, counseling, analysis, opinion, conflict resolution and pre-litigation work. Jim’s practice builds on his experience as a law firm patent practitioner, as an in-house patent attorney, and, prior to practicing law, as a computer programmer. His patent practice extends over a range of technology areas including software, Internet, telecommunications, mobile communications, e-commerce, financial services, payment systems, semiconductor processing and device fabrication, signal processing and circuit design, biomedical, environmental and energy technologies.

Jim joined Mauriel Kapouytian Woods first as Of Counsel and later as a Partner. Prior to that, he worked as an associate at the Manhattan offices of law firms including Greenberg Traurig and Brown Raysman. He also worked as in-house patent counsel for Yahoo! Inc. at their California offices in Burbank and in Silicon Valley. Prior to attending law school, he worked as a relational database computer programmer for an environmental laboratory.

As in-house patent counsel for Yahoo! Inc., Jim managed a large portfolio of patent assets. He worked to plan, build and manage a strategic patent portfolio providing leverage for defensive, offensive, licensing and transactional purposes. He provided or managed services including patent program development and implementation, patent harvesting and invention prioritization, assignment to and management of patent prosecution by US and foreign law firms, pre-transaction evaluation and diligence, evaluation and advice prior to acquisitions of technology companies and their patent suites, and conflict resolution and pre-litigation analysis and negotiations.

Education

  • Rutgers University Law School J.D., 1999
  • NJ Institute of Technology, M.S., Environmental Science, 1995
  • Rutgers University and NJ Inst. of Tech, B.A., Applied Physics, conc. in Computer Science, 1992

Bar Memberships

  • Admitted in New York and New Jersey
  • United States Patent and Trademark Office registered