James B. Devaney’ practice focuses on strategic IP counseling and analysis, with a particular emphasis on patent-related matters, to help clients acquire, protect and monetize intellectual property and reduce exposure to infringement.
He knows how to make complex issues and difficult subject matter understandable – he teaches patent law and prosecution at two law schools, and is a frequent speaker and author on the topic of patentable subject matter eligibility of computer software.
James also is a founding member of Shook’s Internet and Data Security Team, helping clients deal with the ever-changing cyberthreats they face doing business on the Internet.
With three degrees in computer engineering and electrical engineering, James brings significant training and research experience to his patent procurement practice, which includes all aspects of preparation and prosecution of U.S. and international patent applications in several diverse technology fields.
Much of his practice is in the computer-related arts, including software (e.g., mobile-device apps, applications, online services), telecommunications, healthcare IT, distributed (cloud) computing, secure computing, user interfaces, computer architecture, business methods and mechanical arts. In addition, James has drafted more than 100 patent applications for machine learning and artificial intelligence technologies.
James has more than 10 years of experience analyzing patent portfolios for infringement and validity, conducting risk assessment, search and strategic acquisition, due diligence for licensing and assertion, and patent landscape mapping.
He has prepared patentability opinions, managed legal and technical teams, and worked closely with product developers to identify and implement patent design-around technologies.
His extensive experience in patentable subject matter eligibility of computer software has included analyzing hundreds of 35 U.S.C. § 101 cases before the Patent Trial and Appeal Board, district courts, and the TC 3600 art unit of the U.S. Patent Office (software, healthcare and business methods) to empirically determine successful patent prosecution and litigation strategies for clients.
In the rapidly-changing field of Internet and data security, James counsels companies on matters involving unauthorized access and computer hacking, counterfeit goods and software (e.g., fake products, apps and websites), computer fraud and abuse.
James helps clients dealing with the aftermath of cybertorts and digital crimes, including computer malware, botnet takedowns and phishing schemes. He also is experienced in performing threat assessments, determining attribution, reverse-engineering malware and software applications, evaluating offenders and defendants for compliance with settlements, developing discovery plans and preparing criminal referrals and civil actions.
James is on the adjunct faculty of the University of Missouri – Kansas City and Washburn University schools of law, teaching courses in patent law and prosecution. He also teaches continuing legal education (CLE) courses designed for patent attorneys, and is the author and co-author of numerous journal articles. He also has taught courses in electrical and computer engineering.
His research has focused on signal processing, embedded systems design and microcomputer architecture. He also has performed research in cybersecurity and technical policy, and has assisted on policy matters at state and federal levels. James received special recognition for developing landmine detection technologies that save an average of one life every three days.
- J.D., University of Missouri
- M.S., University of Missouri (Electrical Engineering)
- B.S., University of Missouri (Electrical Engineering)
- B.S., University of Missouri (Computer Engineering; Minor in Mathematics)
- U.S. Patent and Trademark Office
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