Jim Robertson Headshot - Large | Balch & Bingham

James M. Robertson

Of Counsel
  • (205) 212-7620
Download Resume jrobertson@jmrpatents.com
Education
  • University of Arizona
    B.S., Metallurgical/Materials Science Engineering, 1985, Full Academic Scholarship, Tau Beta Pi
  • The University of Alabama School of Law
    J.D., 1991, Moot Court Board, Jessup Moot Court Team
Bar Admissions
  • Alabama, 1993
  • U.S. Patent Office, 1992
  • Illinois, 1991
About Jim
Q&A
  • What previous experiences, prior to your work at Balch, influence your practice?

    As a former development engineer with a major chemical company I have seen the importance of developing and protecting intellectual property rights both for internal use to protect existing markets and for potential licensing. At the same time, I have seen the importance of avoiding controversy by designing around pre-existing patents when possible and developing the best possible defenses when a design around option may be impractical. When clients develop and protect their own intellectual property while also understanding the boundaries of both their own rights and the legitimate rights of other parties the intellectual property system operates as it should to foster innovation to benefit society at large.

  • What type of clients do you represent?

    I work with clients in the manufacturing industry and research institutions involved in the development of new and/or improved technology. These clients use their intellectual property rights to secure existing business while also facilitating investment in additional manufacturing capacity. While many companies may not have formal research facilities, most are nonetheless engaged in continuous process improvement thereby leading to incremental innovation. If those innovations are not protected, any advantage is lost. Conversely, using those innovations to develop a reasonable intellectual property portfolio can add substantial value to the company both in terms of competitive advantage and as an independent asset which can be monetized if desired.

     

Select Matters

  • Patent Prosecution: Represented major manufacturer in acquiring over fifty new patents for a range of automotive and industrial parts.
  • AIA Representation: Represented a domestic beverage company in a series of PGR and IPR cases before the U.S. Patent Trial and Appeal Board.
  • Patent Litigation: Represented a domestic textile company sued for patent infringement over a flame retardant mattress fabric with an ultimate jury verdict of non-infringement.
  • Commercial Matters: Assisted various clients in conducting asset purchases including intellectual property portfolios.

News

    Credentials

    Education
    • University of Arizona, B.S., Metallurgical/Materials Science Engineering, 1985, Full Academic Scholarship, Tau Beta Pi
    • The University of Alabama School of Law, J.D., 1991, Moot Court Board, Jessup Moot Court Team
    Courts
    • U.S. District Court, Northern District of Alabama, 2016
    • Supreme Court of Alabama, 1993
    • U.S. District Court, Northern District of Illinois, 1991
    • Supreme Court of Illinois, 1991
    Bar Admissions
    • Alabama, 1993
    • U.S. Patent Office, 1992
    • Illinois, 1991