Attorneys

Jim Strom

Jim Strom

Bar Admissions

  • Maryland
  • District of Columbia

 

Anh-Chi Vuemail

Linked In

Anh-Chi Vu425-939-0781

Jim Strom joined Markwith Law in 2019. He has over 20 years of experience as a Patent attorney. His practice focuses on patent drafting and prosecution, primarily for computer technology.

Mr. Strom’s services include legal advice and support with respect to:

  • Preparing and prosecuting patent applications across wide range of technologies including networking, operating systems, user interfaces, virtualization, mixed/augmented/virtual reality, communication protocols (web, peer-to-peer, security, cellular, wireless, routing, e-commerce, etc.), software engineering (testing, compilers, ecosystem instrumentation, etc.), search engines, cloud computing, cryptography and security, encoding algorithms, machine learning, antennas, database engines, 3D graphics, robotics, and others;
  • Providing recommendations to in-house and foreign patent attorneys on prosecution strategy and filing decisions;
  • Handling the full life cycle of patents, from idea harvesting, through selecting inventions for patenting, drafting, prosecuting, identifying infringers, and preparing claim charts documenting infringement (with many patents licensed); and
  • Preparing infringement and validity opinions.

In addition to drafting and prosecuting patents, Jim reviews patent portfolios for valuation and to inform business decisions, advises foreign and domestic attorneys on patent strategy, formulates infringement opinions, reviews invention disclosures, conducts patent harvesting sessions with inventors, and other tasks that require extensive technical and legal knowledge. Jim is also well versed in copyright and trade secret law and how these other forms of intellectual property protect his client’s innovations and technologies.

Previous Experience

Prior to private practice Jim was a Patent Attorney for Microsoft.

Jim’s passion for software started in 8th grade, programming on punch cards and paper tape. Continuing to program in high school, Jim won numerous awards in the Baltimore County Science Fair. He then supported himself with programming work while earning math and computer science degrees at the University of Maryland, as well as his law degree. Through years of education, work, and patent practice, he has lived through the computing revolution firsthand. As an attorney, there are few areas of computing where Jim hasn’t obtained meaningful quality patents.

Drafting a patent application requires learning new and often complex technology, and translating an invention into something understandable to engineers, patent examiners, and judges, sometimes across the world. Turning patent applications into useful legal instruments requires staying abreast of a rapidly changing body of law and applying that legal understanding with constant purpose and efficiency. The rewards are many; a difficult puzzle solved, a client holding a patent with the breadth and legal strength to be enforced, and another piece of science and technology available to the public.

One test of patent work is whether acquired patents are employed to some benefit, and one way to accomplish this is to craft patents that will have lasting relevance. When Jim works on a patent he tries to anticipate how the relevant field might change in the future, where competitors are, and where they are moving. Understanding trends in technology is important because the law is always changing but issued patents are fixed in time. This approach has served his clients well; he has identified and directed the prosecution of dozens of patents infringed by competing products, and many of the patents he has obtained have been monetized through licensing or leveraged during cross-licensing negotiations.

In Jim’s spare time he enjoys fishing with his sons, archery, hiking, bicycling, reading, cooking, and aggressive yard work.

Education

  • University of Memphis School of Law, TN (J.D., 1998)
  • University of Maryland, College Park (B.S., Math and Computer Science (double major))