For nearly 20 years, James has provided clients with IP counseling, including with respect to patent portfolio strategy and development and intellectual property litigation. Having spent much of that time in-house, James gained invaluable insight into how companies develop their products and business strategies and how the protection of intellectual property can fit within that framework.

Prior to joining the firm, James served as general counsel of a venture-capital-backed startup in the field of additive manufacturing, responsible for both the legal and intellectual property functions. James worked with senior management to implement an aggressive patent portfolio development strategy. Within two years, James grew the patent portfolio from a few utility applications and a handful of provisional filings into a robust international portfolio, including several issued U.S. patents. James’s in-house experience also includes nine years at a multinational energy management company where he served in several IP positions of increasing responsibility, including as Chief Patent Counsel for the Americas region. James managed a staff of patent professionals and assistants in overseeing the patent portfolio development for multiple business units in a variety of technologies. He worked closely with research and product development teams to identify and evaluate inventions for potential patenting and manage patent prosecution.

James has developed patent portfolios in a variety of technical areas including additive manufacturing, computer software, machine vision, machine learning, and power electronics. He has worked on patent portfolios involving computer and communications networks, semiconductor devices, and mechanical devices. In addition, he has represented clients on a number of contested intellectual property matters including trade secret and non-competition litigation, trademark infringement, and patent infringement.

James advises clients on establishing corporate processes that link intellectual property portfolio development to business objectives. His advisory role includes assisting clients in conducting invention mining sessions, providing patent portfolio analysis of competitors, establishing corporate intellectual property policies, managing budgets for cost effective intellectual property portfolio development, and performing intellectual property audits. His practice includes advising clients on trade secrets and brand management. In addition, he has advised clients on a broad range of commercial and intellectual property based transactions, including negotiating and drafting patent, software and technology license agreements, development agreements, commercial contracts, manufacturing and supply agreements, and non-disclosure agreements.

James has been an invited speaker on issues of IP management, serving as a panelist on topics such as patent portfolio development, trade secret management, and defensive patent strategies. He has also served on the Board of the Asian American Lawyers Association of Massachusetts, and as the Chair of the In-House Counsel Committee of the Boston Patent Lawyers Association. James is a graduate of Boston University School of Law and holds a M.S. in Electrical Engineering from Columbia University and a B.A. with dual majors in Psychology and Mathematical Sciences from the Johns Hopkins University.

Certifications

• Black Duck Certified

• Counseling
• Patents
• Post-Grant Proceedings
• Design Patents
• Trade Secrets
• Trademarks
• Copyrights
• IP Litigation
• Agreements

• Electrical Engineering
• Computer Software
• Computer Hardware
• Robotics
• Business Methods
• Internet of Things
• Network Infrastructure
• Clean Technology
• Mechanical Engineering
• Medical Devices
• Medical Imaging
• Mobile
• Optics
• Semiconductors
• Telecommunications

• 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

Articles

• Patent Portfolio Management in Uncertain Economic Times, Article Published in Bloomberg Law, June 29, 2020
• Patent Marking: Give Your Patent Some Bite Before Litigation Even Begins, New England In-House, April 25, 2006
• Making Your Mark: Using Trademarks to Build Your Brand, Inventors Digest, July/August/September 2005

IP News Alerts

• United States Patent Office Finds Artificial Intelligence System Cannot Be An Inventor, April 29, 2020

• "What Early Stage Startups Need to Know About Funding," MITEF Webinar, August 13, 2020
• “Managing and Growing an IP Portfolio,” High Tech and Emerging Tech Conference of the Boston Bar Association, Boston, November 2018
• “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

• James Coe Rejoins Hamilton Brook Smith Reynolds as Counsel more

• 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