The Innovation Firm

F. James Coe

Practice Areas

Technologies

Education

  • The Johns Hopkins University, B.A. in Mathematical Sciences and Psychology
  • Columbia University School of Engineering and Applied Sciences, M.S. in Electrical Engineering
  • Boston University School of Law, J.D., cum laude

F. James Coe

F. James Coe Attorney

F. James Coe

Of Counsel
Concord office
978.341.0036

James has in-depth experience with patent litigation, opinions and prosecution in private practice, including with our firm, and more recently as Chief Patent Counsel with a multinational technology corporation.

In counseling clients on intellectual property strategy issues, James advises clients on establishing corporate processes that link intellectual property portfolio development to business objectives.  This includes assisting clients in conducting invention mining sessions, providing portfolio analysis of competitors, establishing corporate intellectual property policies, managing budgets for cost effective portfolio development, and performing intellectual property audits.  

In developing patent portfolios, James aids clients with patent filing strategies, the preparation and prosecution of patent applications, patent opinion counseling (including infringement, validity, and due diligence assessments), licensing agreements, and clearance opinions.  James has developed patent portfolios in a variety of technical areas including computer software, machine vision, machine learning, power electronics, computer and communications networks, semiconductor devices, and mechanical devices.  In addition, he has represented clients on a number of intellectual property matters including trade secret and non-competition litigation, trademark infringement, and various patent infringement litigation cases.

For nine years, James served as in-house intellectual property counsel, most recently as Chief Patent Counsel of the Americas region for Schneider Electric, a global leader in energy management solutions, software and products.  While at Schneider Electric, he managed a team of patent professionals in developing the patent portfolios of the business units and the R&D centers operating within the Americas region.  In doing so, James helped establish and oversee the execution of various intellectual property and patenting processes.  James worked directly with various business units and R&D centers worldwide in conducting invention mining sessions, participating on multiple patent committees, and managing the preparation and prosecution of patent applications.  In addition to patent portfolio development, James performed clearance opinions and managed patent litigations.  

James is an invited speaker on intellectual property strategy issues, including software patenting, trade secret management, and patent processes and portfolio management.

Professional Associations
• Asian American Lawyers of Massachusetts
• Boston Patent Law Association
• Association of Corporate Counsel
• American Intellectual Property Law Association

Publications
• “Patent Marking: Give Your Patent Some Bite Before Litigation Even Begins” New England In-House, April 2006
• “Making Your Mark: Using Trademarks to Build Your Brand,” Inventor’s Digest, July/August/September 2005

Speaking Engagements
• “The 3 Pillars of an IP Defense Strategy,” IP Defense Summit, Boston, November 2016.
• “Protecting Patents on a Budget,” IP Strategy Innovation Summit, Boston,  September 2016
• “When to Trade Secret and Manage the Process”, IP Strategy Summit, Boston, May 2016.

Bar Admissions

  • U.S. Patent and Trademark Office
  • Massachusetts
  • U.S. District Court, District of Massachusetts
  • U.S. Court of Appeals for the First Circuit
  • U.S. Court of Appeals for the Federal Circuit
  • F. James Coe Joins Hamilton Brook Smith Reynolds more
Biography

James has in-depth experience with patent litigation, opinions and prosecution in private practice, including with our firm, and more recently as Chief Patent Counsel with a multinational technology corporation.

In counseling clients on intellectual property strategy issues, James advises clients on establishing corporate processes that link intellectual property portfolio development to business objectives.  This includes assisting clients in conducting invention mining sessions, providing portfolio analysis of competitors, establishing corporate intellectual property policies, managing budgets for cost effective portfolio development, and performing intellectual property audits.  

In developing patent portfolios, James aids clients with patent filing strategies, the preparation and prosecution of patent applications, patent opinion counseling (including infringement, validity, and due diligence assessments), licensing agreements, and clearance opinions.  James has developed patent portfolios in a variety of technical areas including computer software, machine vision, machine learning, power electronics, computer and communications networks, semiconductor devices, and mechanical devices.  In addition, he has represented clients on a number of intellectual property matters including trade secret and non-competition litigation, trademark infringement, and various patent infringement litigation cases.

For nine years, James served as in-house intellectual property counsel, most recently as Chief Patent Counsel of the Americas region for Schneider Electric, a global leader in energy management solutions, software and products.  While at Schneider Electric, he managed a team of patent professionals in developing the patent portfolios of the business units and the R&D centers operating within the Americas region.  In doing so, James helped establish and oversee the execution of various intellectual property and patenting processes.  James worked directly with various business units and R&D centers worldwide in conducting invention mining sessions, participating on multiple patent committees, and managing the preparation and prosecution of patent applications.  In addition to patent portfolio development, James performed clearance opinions and managed patent litigations.  

James is an invited speaker on intellectual property strategy issues, including software patenting, trade secret management, and patent processes and portfolio management.

Professional Associations
• Asian American Lawyers of Massachusetts
• Boston Patent Law Association
• Association of Corporate Counsel
• American Intellectual Property Law Association

Publications
• “Patent Marking: Give Your Patent Some Bite Before Litigation Even Begins” New England In-House, April 2006
• “Making Your Mark: Using Trademarks to Build Your Brand,” Inventor’s Digest, July/August/September 2005

Speaking Engagements
• “The 3 Pillars of an IP Defense Strategy,” IP Defense Summit, Boston, November 2016.
• “Protecting Patents on a Budget,” IP Strategy Innovation Summit, Boston,  September 2016
• “When to Trade Secret and Manage the Process”, IP Strategy Summit, Boston, May 2016.

Education
  • The Johns Hopkins University, B.A. in Mathematical Sciences and Psychology
  • Columbia University School of Engineering and Applied Sciences, M.S. in Electrical Engineering
  • Boston University School of Law, J.D., cum laude
News
  • F. James Coe Joins Hamilton Brook Smith Reynolds more
Bar Admissions
  • U.S. Patent and Trademark Office
  • Massachusetts
  • U.S. District Court, District of Massachusetts
  • U.S. Court of Appeals for the First Circuit
  • U.S. Court of Appeals for the Federal Circuit

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