James A. Cooke III, Ph.D.

Special Counsel

  • James A. Cooke III, Ph.D.
  • Phone: +1 202 776 5252
    Fax: +1 202 379 9746

    Import to Address Book

  • Duane Morris LLP
    505 9th Street, N.W., Suite 1000
    Washington, DC 20004-2166
    USA

James A. (“Jamie”) Cooke III focuses his practice on patent prosecution management, strategic client counseling, opinion preparation on issues relating to infringement and validity, and post-grant review proceedings, with an emphasis on software, business methods, graphical user interfaces, and related technologies developed and implemented by the financial services industry.

As a member of the firm’s Financial Technology (FinTech) industry practice group, Dr. Cooke counsels financial institutions, technology companies, and emerging start-ups on the development, implementation, and protection of distributed-ledger and blockchain technologies, smart contracts, machine learning and artificial intelligence, and payment systems, and innovative cryptocurrency and token technologies. Dr. Cooke has extensive experience counseling clients in patent, trademark, and copyright matters related to software, mobile applications, electronic trading platforms, graphical user interfaces, content management and delivery systems, Internet-of-Things (IoT) technologies, and video compression and image processing technologies.

Through his knowledge of both U.S. and foreign patent systems, Dr. Cooke applies a unique global perspective to advise clients on worldwide filing and licensing strategies. During the course of his career, Dr. Cooke has overseen the drafting and prosecution of hundreds of patent applications and assisted clients with strategically building and managing their portfolios. He also assists clients extract value from their portfolios through licensing and other strategies, and he represents clients in proceedings before the Patent Trial and Appeal Board.

Dr. Cooke is a graduate of Georgetown University Law Center. He holds a Ph.D. in mechanical engineering from Yale University, and is a cum laude graduate of the University of Maryland in fire protection engineering. Dr. Cooke also served as a visiting researcher at the IBM Thomas J. Watson Research Center, concentrating on the development and implementation of solutions to complex fluid-dynamic and chemical-kinetic problems across massively parallel, distributed-memory computing systems.

Areas of Practice

  • Intellectual Property

    - Patents
    - Financial Technology (FinTech)
    - Inter Partes Review
    - Technology Transactions and Licensing
    - Intellectual Property Litigation
    - Financial Services

Admissions

  • District of Columbia
  • New York
  • U.S. Patent and Trademark Office

Education

  • Georgetown University Law Center, J.D., 2011
  • Yale University, Ph.D., Mechanical Engineering, 2006
  • University of Maryland, B.S., cum laude, 1999

Experience

  • Duane Morris LLP
    - Special Counsel, 2016-present
  • Fish & Richardson PC
    - Of Counsel, 2015-2016
  • Finnegan LLP
    - Associate, 2011-2015
    - Student Associate, 2008-2011
  • Sterne Kessler Goldstein & Fox PLLC
    - Student Associate, 2007-2008
    - Technical Specialist, 2005-2007
  • IBM Thomas J. Watson Research Center
    - Visiting Researcher, Summer 2004
  • Yale University
    - Graduate Researcher in Mechanical Engineering, 1999-2005

Professional Activities

  • American Intellectual Property Law Association
  • American Bar Association
  • New York Bar Association

Selected Publications

  • Author, "Digital Content on the Blockchain: Navigating Copyright and Ownership Issues," World Intellectual Property Review, August 22, 2018

  • Coauthor, "What Was Everyone Waiting For? 2014 Interim Guidance on Patent Subject Matter Eligibility," CIPA Journal, Jan. 2015

Selected Speaking Engagements

  • Presenter, “Blockchain Business Applications: Dot-Com Bust or Business Boom?” Duane Morris Commercial Contracts Checkup Series, Philadelphia and Webinar, October 11, 2018

  • “Understanding Cryptocurrencies and Blockchain Technologies: Separating Fact from Fiction,” Miami, Florida, March 2, 2018

  • “Cryptocurrencies and Blockchain Technologies: Separating Fact from Fiction,” Miami, Florida, March 1, 2018

  • “Helping Financial Technology (FinTech) Companies Compete in the US,” CLE Seminar and Webinar, New York, New York, November 16, 2017

  • “Demystifying the Blockchain: Protecting Distributed-Ledger Technologies in the Financial Services Industry and Beyond,” Washington, D.C., May 11, 2017

Representative Matters

  • Counsel a multinational financial institution on U.S. and foreign patent matters related to blockchain technologies, payment systems, machine learning and artificial intelligence, and digital banking technologies; assist in strategic planning and invention harvesting, and manage a patent portfolio of over 250 U.S. and foreign patents
  • Represented a financial services client in patent matters related to computerized systems for establishing, trading, and market-making in actively managed exchange traded funds (ETFs)
  • Assisted a large technology company in strategic planning, negotiation, and closing of a US 1.056 billion patent deal involving a sale of over 800 U.S. and foreign patents and a grant of a portfolio license
  • Counseled technology clients on patent matters related to computerized platforms for exchanging digital tokens for real-world products
  • Assisted technology clients in the preparation of technical white papers in support of initial coin offerings (ICOs) for computerized trading platforms and token technologies
  • Counseled technology clients on U.S. and foreign patent matters related to image processing technologies and adaptive control of digital cameras
  • CBM 2015-00157; Ocean Tomo, LLC, v. PatentRatings, LLC: Represented patent owner, PatentRatings, LLC, in a covered business method (CBM) proceeding before the Patent Trial and Appeal Board (PTAB); obtained a favorable PTAB decision that denied institution of the CBM proceeding