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James A. Scheer

James A. Scheer

Senior Counsel
Chicago
office: 312.526.1545
fax: 312.655.1501
Overview

Jim’s electrical and electronic engineering background adds value to the full range of intellectual property legal services he provides.

Jim’s law practice includes extensive experience in patentability, validity, infringement, clearance, and claim construction analysis and opinions. Since 1978, he has engaged primarily in patent, copyright, trademark and trade secret law, including client counseling, portfolio management, preparation and prosecution of U.S. and foreign patent and trademark applications, litigation, and licensing. Numbered among his clients are Fortune 100 corporations and mid-size and small companies alike.

In the licensing area, he has assisted clients with trademarks, patents and other legal documents, including non-disclosure, assignment, employment, consulting, joint venture and customer agreements.

In client counseling and portfolio management, Jim’s work involves identifying protectable intellectual property; maximizing portfolio value; designing policies and enforcement programs; providing searches and opinions regarding patentability, validity, infringement and right-to-use; dispute negotiation and settlement; advising on conflict avoidance; assisting in introducing new products; conducting design-around projects; and implementing worldwide transfer of intellectual property rights, including due diligence investigations in connection with merger transactions.

Jim taught intellectual property law as a professor at the John Marshall Law School in Chicago, with courses in patent office practice and substantive patent law. He also has been an associate professor of electronics at Moraine Valley College, where he taught courses in analog and digital electronics, computer systems and software programming.


Industries

Services

Recognition

  • Martindale-Hubbell AV Preeminent

Education

  • J.D., Northern Illinois University College of Law
  • Master of Laws in Intellectual Property, John Marshall Law School-Chicago
  • M.S., University of Notre Dame
    • Electronic Engineering
  • B.S., University of Notre Dame
    • Engineering Science

Admissions

  • Illinois
  • U.S. Patent and Trademark Office

Professional Associations and Memberships

  • Institute of Electrical and Electronic Engineers 
  • Intellectual Property Law Association of Chicago