James Carlson
- Senior Associate | U.S. Patent Attorney and Attorney at Law
- English
James Carlson’s practice emphasizes domestic and foreign patent prosecution, open source and privacy compliance, patent and software licensing, and IP counseling in a wide variety of technical disciplines, such computer software, video games, oil and gas technologies, business methods, semiconductors, and optical systems. In particular, Mr. Carlson has significant experience in providing legal counsel to clients regarding a wide range of artificial intelligence issues, such as the patentability of machine learning inventions. Moreover, Mr. Carlson also specializes in patent-eligibility analyses in view of recent Supreme Court and Federal Circuit jurisprudence.
Prior to attending law school, Mr. Carlson worked with several nonprofits in developing software and providing technology counseling. He previously 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.
Admissions
- United States Patent and Trademark Office
- State Bar of Texas
Select Publications & Presentations
- But My Lawyer Said So: A Recent Court Case on Waiving Attorney-Client Privilege Before the United States Patent and Trademark Office (2023)
- An Inter Partes Review in Bad Faith: A California Courts Weighs IPR Petitions For Malicious Prosecution (2022)
- Intelligently Protecting AI: The Dos and Don'ts Under U.S. Patent Law (co-authored by Richard Coates, Ph.D.) (2022)
- Video Game Technology and IP Law: New Video Game Commerce Meets Old School Trademark Law (2021)
- Video Game Technology and IP Law: Now You're Playing With Copyright Law (2021)
- A Meeting of The Patent Minds: Reconciling Patent Eligibility at The USPTO and Federal Circuit (2021)
- Video Game Technology and IP Law: Problems in Patents (2021)
- Petition Denied: The United States Supreme Court Refuses to Reconsider Patent Eligibility Jurisprudence (2020)
- USPTO Updates: Changes to Examination Procedures for Subject Matter Eligibility (2019)
- Eastern District of Texas Implements New Local Rules for Challenging Patent Eligibility (2019)
- University of Houston Law Center, J.D., Cum Laude, 2011
- Georgia Institute of Technology, B.S., Electrical Engineering, 2005
RELATED ARTICLES
- First Patent Sets Maximum Patent Term for Later Patents under Obviousness-Type Double Patenting
- When Inventors Become Co-clients: Best Practices for Inventor Communications in Prosecuting Patent Applications
- A Duty Above Confidentiality: A Recent PTAB Decision Illustrates the Duty of Candor in PTAB Proceedings
- ChromaDex – A Man-Made Dietary Supplement can also be a Naturally-Occurring Product
- But My Lawyer Said So: A Recent Court Case on Waiving Attorney-Client Privilege before the United States Patent and Trademark Office
- An Inter Partes Review (IPR) in Bad Faith: A California Court Weighs IPR Petitions for Malicious Prosecution
- Intelligently Protecting AI: The Do's and Don'ts Under U.S. Patent Law
- Video Game Technology and IP Law: New Video Game Commerce meets Old School Trademark Law
- Video Game Technology and IP Law: Now You're Playing with Copyright Law
- A Meeting of the Patent Minds: Reconciling Patent Eligibility at the USPTO and Federal Circuit
- Video Game Technology and IP Law: Problems in Patents
- 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