J. M. ROBERTSON, LLC

The practice handles issues involving a wide range of technologies.  Representative fields include mechanical and electro-mechanical devices, organic and inorganic chemistry, metallurgical and materials technology and textile technology.   

About The Clients:

Clients range from multi-national corporations to organizations with only a few employees.  The practice has a particularly strong history of working cooperatively with in-house legal departments in PTAB litigation, patent preparation and opinion matters.  The practice also serves as a resource to general practice law firms to address the intellectual property needs of their clients as needed.     

James M. (Jim) Robertson  

Mr. Robertson is an attorney and engineer with a practice focused in the areas of patent and trademark law.  With an educational background and work experience in metallurgy and materials science, he has assisted a number of major manufacturing companies in protecting intellectual property assets covering a wide range of technologies and in defending against claims of infringment.  During more than 25 years of experience, he has written and prosecuted hundreds of U.S. and international patent applications.  He also has extensive experience in complex intellectual property litigations as well as in developing infringement and validity opinions, conducting due diligence evaluations of intellectual property portfolios and managing the acquisition and enforcement of international rights. 

Mr. Robertson also maintains an active trademark practice and routinely assists clients with U.S. and international registration and maintenance of their marks as well as in the exercise of policing those marks against wrongful use.  

Prior Experience 

Mr. Robertson was a shareholder in the intellectual property group of a large regional law firm based in Birmingham, Alabama and practiced patent law with a major intellectual property firm in Chicago, Illinois.  Prior to entering law school, Mr. Robertson worked as an development engineer for the Linde Division of Union Carbide Corporation.    

Representative Transactions 

• Directed a series of AIA proceedings before the Patent Trial and Appeal Board (PTAB) serving as primary brief writer and oral adocate on behalf of a national beverage company as petitioner resulting in cancellation of all challenged claims in five (5) patents and the resulting termination of corresponding District Court litigation.      
• Represented the University of South Alabama in relation to preparation and prosecution of various patent applications directed to advanced composite materials.  
• Represented an interantional textile manufacturer in patent prosecution relating to novel cleaning products.   
• Represented a cosmetics company in negotiating a licensing agreement with a national beauty pageant. 
• Represented multi-national automotive parts supplier in developing a portfolio of patents in the field of automotive restraint systems.
• Represented client in securing U.S. and international patent protection on a novel process for producing and using sulfuric acid in a hydrometallurgical extraction circuit and in licensing said technology to a third party.
• Successfully represented European pharmaceutical firm in securing U.S. patent protection on a novel method for producing microcapsules for parenteral administration.
• Managed successful multi-party oppositions of issued European patents directed to low permeability fabrics and saturated mops. 
• Developed and maintained extensive trademark portfolio for catalogue marketer of childhood educational products.
• Represented international manufacturer of earth moving equipment in the preparation and prosecution of patent applications directed to hydraulic systems and material treatment techniques.