James is Head of SEP, advising on Standard-Essential Patents across all technology areas, including telecommunications, wireless, video and audio coding. His practice focuses on advising clients on patent infringement and validity matters and the valuation and enforceability of SEP portfolios. He has been involved in a number of high profile litigation cases in the UK, US, and Germany; and in patent pool, licensing, acquisition and divestment transactions. James is well placed to advise clients on the new Unified Patent Court (UPC) - see further details at EIP Amar, our alliance created to support clients in any litigation before the UPC.
James is highly skilled in navigating technical standards relating to GSM, UMTS, LTE, New Radio (5G), and IMS cellular technologies, and standards relating to H.264 (AVC) and H.265 (HEVC) video compression.
Before joining EIP, James spent 18 years working as in-house patent counsel for Nokia and Hewlett-Packard in the UK, USA and Singapore. James is a qualified UK and European Patent Attorney and holds a UK IP Litigation Certificate. He passed the US Patent Bar while working in the US, and qualified to practice before the Intellectual Property Office of Singapore while working in Singapore.
Experience
- Supporting counsel teams in asserting and defending against SEP portfolios in Germany (Mannheim, Dusseldorf, Munich and Hamburg), France (Paris), UK, China, and the US.
- Technical lead in face-to-face SEP license negotiations with Samsung, Apple, Google, LG, Xiaomi, HTC, Fujitsu, and Kyocera.
- Preparing SEP portfolio valuation studies for use in FRAND licensing and litigation.
- Participation in patent pool negotiation meetings in the video and audio codec field.
- Representing and advising major patent pool clients in the wireless space.
- Working closely with the ETSI legal team to assist clients with the preparation and submission of SEP declarations for cellular standards.
- Securing full membership for EIP at ETSI and participating in the ETSI IPR Special Committee.
- Conducting independent essentiality evaluation studies for clients in the 4G and 5G field.
Published articles
- May 2021
Finance Monthly, UK Patent Box Scheme Set To Become An Even More Valuable Tax Benefit (link) - March 2021
EIP Newsflash, UK Patent Box scheme set to become an even more valuable tax benefit (link) - September 2019
Intellectual Property Magazine, Battle Stations (link) - 31 October 2018
Intellectual Property Magazine, Boxed out (link)
Education and qualifications
- UK Chartered Patent Attorney, 2003
- European Patent Attorney, 2000
-
2006
Business of IP, Scandinavian International Management Institute -
1995
Certificate in Intellectual Property Law, Queen Mary, University of London -
1991 — 1994
B.Sc First Class Honours, Physics, University of Bristol
Career history
- 2012 — present
Partner, EIP - 2002 — 2012
Various including Head of Patenting Operations, Nokia - 1999 — 2002
IPR Counsel, Agilent Technologies - 1998 — 1999
IPR Counsel, Hewlett-Packard
Awards and recognition
- Listed in IAM Strategy 300: Global Leaders 2023 (link)
- IAM Strategy 300: The World's Leading IP Strategists 2022 (link)
- IAM Strategy 300: The World's Leading IP Strategists 2017 (link)
Speaking engagements
- 12 November 2012
Tech City, Israeli Investment Forum (link)
Additional information
Memberships: AIPPI
Specialities
Digital
- Audio codecs
- Consumer electronics
- Image and signal processing
- Telecommunications
- Video codecs