James McDaniel brings over 21 years of proven expertise in corporate and intellectual property law to Zale Patent Law, Inc. as Of Counsel. His career spans patent prosecution, IP licensing, corporate counsel, and patent examination, with experience at major corporations including Hewlett-Packard, General Electric, and Westvaco Corporation.
Professional Experience
Law Office of James McDaniel — Intellectual Property Attorney (2015–Present)
Advises and counsels clients in the areas of intellectual property and corporate law. Drafts and reviews contracts, leases, and agreements. Prepares and prosecutes patent and trademark applications. Conducts due diligence analysis.
LSI Corporation — Senior Licensing Manager (2011–2015)
Advised and counseled in the areas of offensive/revenue generating IP/technology licensing, acquiring/selling intellectual property, open source licensing, and corporate law. Drafted and negotiated IP/technology licenses and acquisition agreements. Member of the HP IP/Technology Licensing Review Board. Over 100 issued patents and over 50 license agreements.
Hewlett-Packard Company — Corporate Counsel (2000–2009)
Advised and counseled in the areas of IP/technology licensing, acquiring/selling intellectual property, open source licensing, and corporate law. Managed patent generation matters for various technology sections for the Imaging and Printing Group. Oversaw legal work prepared by outside counsel. Managed litigation.
Westvaco Corporation — Division Counsel (1993–2000)
Managed legal matters for the Bleached Board Division, the largest division of the Westvaco Corporation. Advised and counseled the Division in areas of litigation, contracts, antitrust, intellectual property, product clearance, due diligence, joint developments, and corporate law.
General Electric — Senior Counsel (1990–1993)
Handled diverse legal matters for General Electric concentrating principally in patent application issues. Advised and counseled clients mainly in areas of laser, aircraft engine, and superconductivity technologies. The top producer of General Electric patents — filed over 100 patent applications in 2 years with 72 patents issued.
United States Patent & Trademark Office — Patent Examiner (1984–1989)
Investigated and examined all aspects of patent applications in various mechanical, electro-mechanical, and electrical areas. Administered prior art searches to determine patentability. Examined over 500 patent applications and issued over 200 patents.
Schlesinger and Myers — Senior Associate (1989–1990)
Developed and prosecuted patent applications for mechanical, electrical, and chemical technologies. Advised in-house and corporate attorneys and inventors concerning intellectual property cases.
Education
- J.D., Intellectual Property Law (1985–1989)
- B.S., Mechanical Engineering (1980–1983)
- B.A., Physics (1977–1981)
Bar Admissions & Certifications
- Registered Patent Attorney, U.S. Patent and Trademark Office
Key Accomplishments
- Top producer of General Electric patents — 100+ applications filed in 2 years
- Examined 500+ patent applications at the USPTO, issuing 200+ patents
- 100+ issued patents and 50+ license agreements at HP/LSI
- Member of HP IP/Technology Licensing Review Board
