James "Jim" E. Schutz

Partner

Atlanta
Business Phone: 404.885.3498
Business Fax: 404.962.6676

james.schutz@troutmansanders.com

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Jim Schutz counsels clients on the protection, licensing, and enforcement of intellectual property rights and has extensive experience in Patent litigation and prosecution. Jim also regularly counsels clients on technology development and licensing agreements, with an emphasis on software products, and participates in corporate deals requiring the analysis of intellectual property assets.

Jim represents clients in a variety of industries, including computer software and hardware, computer networks, wireless communication systems, telecommunications devices, semiconductor chips, medical devices, and industrial manufacturing machinery.

Jim is actively involved in the Atlanta Startup Community. He represents several startup companies, and has given lectures on various intellectual property topics to numerous organizations including Flashpoint, Startup Weekend, Startup Chicks, AUTM, IEEE, NASA's Langley Research Center, Morehouse School of Medicine's Tech Talks and numerous student groups at Georgia Tech.

Jim holds bachelor’s and master’s degrees in Electrical Engineering from Georgia Tech and is experienced in hardware and software design. Jim is a frequent lecturer on intellectual property topics and is an adjunct instructor at Georgia Tech. Jim was recognized by Best Lawyers in 2014, and has also been recognized as a "Super Lawyer" and as a "Rising Star" in the field of intellectual property law by Law & Politics and Atlanta Magazine.

Representative Matters

  • Patent Prosecution & Portfolio Management:
    Manages and provides counseling for client portfolios and prosecutes foreign and domestic utility and design patent applications for inventions in the telecommunication, electronics, computer hardware/software, and mechanical arts.
  • Software:
    Prepares and negotiates agreements concerning software development and licensing. Jim has negotiated software license agreements involving business enterprise software solutions for a variety of clients with numerous large software providers and integrators including Oracle, SAP, and BearingPoint.
  • Licensing:
    Prepares and negotiates licensing agreements for patents, trademarks, and general technology.
  • Transactional:
    Prepares contracts and agreements, including software development agreements, product development agreements, employee agreements, consulting agreements, confidentiality and non-compete agreements, employee handbooks, and corporate intellectual property policies. Jim also regularly consults on large corporate deals, including mergers and acquisitions, involving technology companies and intellectual property rights issues.
  • Technology Law: 
    Works with large and small companies, including start-ups, to protect intellectual property, develop licensing and IP strategies, prepare and negotiate software and technology development and licensing agreements, obtain venture capital, provide consultation on intellectual property issues regarding merger and acquisition deals, and consult on privacy, data rights, and information management issues.
  • Opinions:
    Prepares non-infringement opinions in the areas of telecommunications, electronics, and software. Performs product evaluations for infringement of patents by clients’ competitors.
  • Patent Litigation:
    Litigates and provides advice concerning disputes in federal trial and appellate courts involving patents, copyrights, trademarks, trade secrets, and other intellectual property and technology related claims.

Publications

  • Sofia Jeong & James E. Schutz, Technology Escrow in Lending: How to Salvage Value After Default, Intellectual Property Today, Jun. 2013, at 26.

Professional and Community Involvement

  • Georgia State Bar (Member, Intellectual Property Law and Computer Law sections)

Rankings and Recognition

  • Recognized in The Best Lawyers in America in Intellectual Property (2014-2015).
  • Selected as a Super Lawyer in Intellectual Property by Law & Politics and Atlanta Magazine (2013-2016)
  • Selected as a Georgia Rising Star in Intellectual Property by Law & Politics and Atlanta Magazine (2005-2007, 2009-2012).
  • Registered to practice before the U.S. Patent and Trademark Office

Professional Experience

  • Partner, Troutman Sanders LLP, 2008-present
  • Associate, Troutman Sanders LLP, 2000-2007
  • Adjunct Instructor of Intellectual Property Law, Georgia Institute of Technology, School of Public Policy (2003-present)
  • Engineer, Georgia Tech Research Institute, 1997
  • Graduate Research Engineer, Georgia Tech Research Institute, 1996-1997
  • Co-op Engineer, Georgia Tech Research Institute, 1991-1996
  • Registered Patent Attorney

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Education

  • University of Georgia, J.D., cum laude, 2000
  • Georgia Institute of Technology, M.S.E.E., 1997
  • Georgia Institute of Technology, B.E.E., 1996
    with high honor

Bar Admissions

  • Georgia
  • U.S. Patent and Trademark Office