James Carlson’s practice emphasizes trademark prosecution, domestic and foreign patent prosecution in the fields of computer science, electronics, and finance, invalidity and infringement analyses, and client counseling with respect to patent enforcement.
Mr. Carlson’s legal experience includes preparing and prosecuting patent applications in the fields of computer software, oil and gas technologies, business methods, sensor networks, semiconductor fabrication, optical networks, wireless communications networks, and memory devices. In particular, he has significant experience overcoming patent-ineligible subject matter rejections at the United States Patent and Trademark Office (USPTO) for software inventions, e.g., financial services applications. He has also drafted legal opinions directed to analyzing issued patents for patent-eligibility, infringement and invalidity analyses, freedom-to-operate studies, and patentability searches. In addition to patent prosecution, Mr. Carlson has significant experience prosecuting trademark registrations and litigating patents involving computer hardware, telecommunications, and MEMS devices.
Mr. Carlson has over two years of engineering experience including software development testing/debugging, networks analysis, implementing telecommunication protocols, wireless network architecture design, and developing geographic information systems (GIS). Before entering law school, he worked at TFA-Wireless, a research project developed by Rice University with a local Houston nonprofit, Technology for All. TFA-Wireless involved creating an operational wireless mesh research network for serving both Rice graduate students and area residents. Additionally, Mr. Carlson worked for the National Technology Assistance Project (NTAP), a technology team under the direction of the Legal Services Corporation to provide technical assistance to legal aid organizations throughout the United States.
- United States Patent and Trademark Office
- State Bar of Texas
- University of Houston Law Center, J.D., Cum Laude, 2011
- Georgia Institute of Technology, B.S., Electrical Engineering, 2005
- Petition Denied: The United States Supreme Court Refuses to Reconsider Patent Eligibility Jurisprudence
- USPTO Updates: Changes to Examination Procedures for Subject Matter Eligibility
- Eastern District of Texas Implements New Local Rules for Challenging Patent Eligibility
- The Wisdom of Athena: Justices Criticize Current State of Patent Eligibility for Diagnostic Methods
- USPTO Updates: Proposed New Fees and Fee Increases
- Copyright before Contract: The Role of Copyright Preemption in Software Licensing
- Consumers Have Standing under Illinois Brick to Sue Apple for Antitrust-Violating App Store Practices
- Over an Apple Barrel: Copyright Lawsuits Must Satisfy Registration Approach
- The USPTO Issues Revised Guidance on Finding Claims Directed to a Judicial Exception
- 18 Months Gone: TC Heartland's Evolving Impact on Patent Litigation in the Eastern District of Texas
- The Technological Problem: The Elusive Key to Patent-Eligible Subject Matter
- The Music Modernization Act: A Copyright Update for a Digital Age
- A Trademark within a Copyright: 9th Circuit Clarifies Trademark Rights in Expressive Works
- Patent Subject Matter Eligibility Six Months after Berkheimer v. HP Inc.
- Subject Matter Patent Eligibility Update to Manual of Patent Examining Procedure (MPEP)
- The Patent-Agent Privilege: Progress Meets Continued Uncertainty