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Jim Jorgensen

Of Counsel

Legal Experience

Jim has extensive experience in all aspects of intellectual property law and has many years of experience as an intellectual property and commercial litigator.  Jim is well-versed in all aspects of litigation and has significant trial and appellate experience.  He has represented a number of Fortune 100 companies in high-stakes patent litigation, and has advised small companies and start-ups regarding intellectual property strategy and commercial legal, contractual, and licensing matters.  Jim represents his clients, and develops individualized legal advice, with the client’s best business interests in mind.

 

Immediately prior to joining CHZ, Jim served as both in-house General Counsel and Chief IP Counsel for multi-billion dollar divisions of a Fortune 100 international industrial conglomerate.  As General Counsel, he advised Senior Management regarding legal and business risk mitigation, commercial litigation, mergers and acquisitions, regulatory compliance, complex commercial transactions, intellectual property licensing and protection, strategic sourcing, legal entity formation/dissolution, cybersecurity, data privacy, and data rights, among other things.  He negotiated numerous key commercial agreements in that role.  As Chief IP Counsel, Jim managed all IP threats, litigations, disputes, negotiations, and Patent Office proceedings, including inter partes reviews.  He oversaw all domestic and foreign patent preparation and prosecution in key technology areas including renewables and low carbon applications, emissions sensing and detection, Battery Energy Storage Systems, SaaS/cloud related offerings, cybersecurity, and artificial intelligence applications.  Jim was also responsible for IP enforcement, IP and technical know-how monetization, freedom to practice analysis, and new product introduction efforts, as well providing strategic inputs and negotiating numerous commercial, licensing, and technical agreements and leading IP due diligence for several acquisitions.

 

Prior to his time in-house, Jim enjoyed great success and recognition in private practice.  He was listed in Best Lawyers in America (2013, 2014, 2015, 2016, and 2017 editions) in the practice areas of intellectual property, patent litigation, and patents.  In 2015, he was awarded “Lawyer of the Year” in Houston Patent Law by Best Lawyers in America.

 

At CHZ, Jim represents and advises clients in relation to:

  • Intellectual property litigation

  • Complex commercial litigation

  • Business negotiations

  • Drafting and negotiating intellectual property, licensing, and complex commercial agreements – including non-disclosure agreements, research and development agreements, joint development agreements, technology transfer agreements, IP license and sales agreements, procurement and sales agreements, and master services agreements

  • Infringement analysis, freedom to operate/product clearance, patentability and enforceability opinions

  • Merger and acquisition legal and IP due diligence

  • Patent Office proceedings, including inter partes reviews

  • Data rights and data privacy

  • General legal counseling and business strategy

 

Education

University of Miami School of Law, J.D., magna cum laude

 

University of Miami, B.S.E.E., cum laude

Admissions

  • State Bar of Texas

  • United States Patent & Trademark Office

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