James (Jim) Kulbaski is an electrical and mechanical patent prosecution and copyright attorney. Mr. Kulbaski’s experience encompasses all aspects of patent law including obtaining, managing, licensing and enforcing patents.

Mr. Kulbaski has 30 years of experience in the patent field, most recently serving as a partner in another IP law firm’s Electrical and Mechanical Patent Prosecution practice group. Prior to that he was a United States Patent and Trademark Office (USPTO) Patent Examiner in the computer arts.

As part of the founding team at Xsensus, Mr. Kulbaski adds substantial value to the firm with his specific experience in:

Communications technologies, including:

  • Mobile communications devices
  • DVDs
  • Computer hardware & software
  • Imaging technology
  • Digital video encoding
  • Networking standards
  • Internet protocols
  • Consumer electronics

Medicals devices, spanning the areas of:

  • Endoscopes
  • Endoscopic imaging
  • Intubation

Mr. Kulbaski has extensive expertise in:

  • Obtaining patents that read on standards
  • Drafting of claims in view of standards documents
  • Ensuring that clients secure issued patents containing claims that are essential to the practice of a standard
  • Working with other companies in a collaborative effort to start patent pools

From 2009 – 2011, he served as Vice-Chair of the Intellectual Property Owners Association’s Standards Setting Committee where he was able to employ his widespread experience by addressing issues concerning patent standards and patent pools.

Mr. Kulbaski was tapped to be 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?” Additionally, Mr. Kulbaski was able to present comments at the FTC’s hearings on Competition and
Intellectual Property regarding patent pools and standards.

The same year, 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 main role was to address the licensing of Microsoft’s communication protocols, an essential part of the final judgment, and he continues to monitor Microsoft’s compliance with the consent decree.

Mr. Kulbaski lectured from 1999-2004 for an international intellectual property program offered at the Federal Institute of Technology in Zurich, Switzerland. He also lectured to intellectual property organizations and various bar associations on the topic of patent pools and standards.

Education

  • Columbus School of Law (J.D.)
  • Rensselaer Polytechnic Institute (B.S.)
    • Electrical Engineering

Bar Admissions

  • Virginia
  • 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

Accolades

  • Top Patent Prosecutor
  • Chambers and Partners
  • ‘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)

Professional Affiliations

  • American Bar Association, Section of Intellectual Property Law, Chairman, 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