In my 30 years of combined law firm and in-house practice, I have experience in preparing and prosecuting patent applications, litigating patents, trade dress and trade secrets, and counseling clients on intellectual property matters. I have handled patents and patent applications in a variety of industries including catalysis, oil refining, automotive, manufacturing, electro-mechanical and plastics. I confidently present the merits of inventions accurately and effectively and use the best intellectual property strategies to secure patent portfolios.
My background as a patent practitioner and chemical engineer has afforded me the technical knowledge and expertise to work with inventors and engineers to identify and protect valuable innovations. As patent counsel for UOP LLC, a Honeywell company, for 18 years I managed a docket of over 1000 active patents and applications, counseled on freedom to practice for new processes and products, managed preparation of patent applications by outside counsel, conducted due diligence and integration for a business and patent portfolio acquisition, trained patent specialists and reviewed and drafted agreements in the oil and gas refining industry.
Prior to my experience in-house with Honeywell, I worked for five years at Molex Incorporated. My experience at Molex involved preparing and prosecuting patent applications and clearing new products for the electrical connector industry. In addition, I negotiated commercial agreements and managed a litigation docket.
My refined skills in patent drafting, counseling and argumentation earned me recognition in the technical community as well as by the United States Patent and Trademark Office (USPTO), which asked me to conduct a training seminar for an assembly of patent examiners on the essentials of oil refining technology in 2014.
My legal career began with me clerking for the Honorable Edward S. Smith on the U.S. Court of Appeals for the Federal Circuit and litigating patent and trade secret cases with the law firms Roper & Quigg and Jones, Day, Reavis & Pogue.
Specialties in Technology
• Oil and gas refining
• Catalysis and processing
• Plant controls and manufacturing
• Electro-mechanical engineering design
J.D. University of Alabama Law School
Law Clerk to the Honorable Edward S. Smith Circuit Judge, U.S. Court of Appeals for the Federal Circuit
Research Assistant to Dean of Law School, Nathaniel Hansford
B.S. in Chemical Engineering with Honors from University of Missouri
Law Practice Admissions
Illinois and Alabama
U.S. Court of Appeals for the Federal Circuit
U.S. District Court for the Northern District of Illinois
United States Patent and Trademark Office
James C. Paschall, Principal
Paschall & Associates, LLC
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