James (Jim) J. Kulbaski is a partner in the firm’s Electrical Patent Prosecution, Copyright and Litigation practice groups. A former United States Patent and Trademark Office (USPTO) Patent Examiner in the computer arts, Mr. Kulbaski has particular expertise in electrical and communications technologies including mobile communications devices, DVDs, computer hardware, software, digital video encoding, networking standards, Internet protocols and consumer electronics.
In addition to litigating cases at both the trial and appellate levels, Mr. Kulbaski’s practice spans all aspects of patent law including obtaining, managing, licensing, and enforcing patents.
Applying his extensive patent pool expertise, Mr. Kulbaski addresses issues relating to patent standards and patent pools, leading the firm’s work in that area and served as Vice-Chair of the Intellectual Property Owners Association’s Standards Setting Committee from 2009 - 2011. He has extensive experience obtaining patents that read on standards, drafting of claims in view of standards documents, and ensuring that clients secure issued patents containing claims that are essential to the practice of a standard. He also is experienced in working collaboratively with other companies in joint efforts to start patent pools.
Mr. Kulbaski was a panelist at the 2002 Federal Trade Commission (FTC) hearings on the topic of “Patent Pools and Cross-Licensing: When Do They Promote or Harm Competition?” and presented comments at the FTC's hearings on Competition and Intellectual Property on the subject of patent pools and standards. He has also lectured to various bar associations and intellectual property organizations on the topic of patent pools and standards.
In 2002, Mr. Kulbaski was retained to assist nine settling states in their ongoing review of Microsoft's compliance with a consent decree that settled the Microsoft antitrust litigation. His primary role in this matter was addressing the licensing of Microsoft's communication protocols, an essential part of the final judgment. He continues to monitor Microsoft’s compliance with the consent decree.
Mr. Kulbaski has been a lecturer from 1999–2004 for an international intellectual property program offered at the Federal Institute of Technology in Zurich, Switzerland.
- Columbus School of Law (J.D.)
- Rensselaer Polytechnic Institute (B.S.)
- Electrical Engineering
- Registered to practice before the U.S. Patent and Trademark Office
- U.S. Court of Appeals for the Federal Circuit
- U.S. District Court for the Eastern District of Virginia
- American Bar Association, Section of Intellectual Property Law, Chairman (1995-1996); Subcommittee on Trade Secret Protection of Computer Software (1995-1996)
- American Intellectual Property Law Association (AIPLA)
- Intellectual Property Owners Association, Vice-Chair of the Standards Setting Committee (2009 - 2011)
- Licensing Executives Society
- Virginia State Bar
- 'IP Star', Managing IP Magazine- (2013 - 2015)
- Chambers USA, 2010
- American Jurisprudence Award
- The Legal 500 U.S., recognized as a leading authority on patent pools in the computer hardware, software and digital video encoding space (2010, 2011)
- Recipient, Best Oralist, Giles Sutherland Rich Moot Court Competition, Northeast Region (1992)