James R. Crawford
Senior Counsel
Norton Rose Fulbright US LLP
Related services and key industries
Biography
Jim Crawford has been counseling clients on intellectual property matters for 17 years, focusing on patent law. Jim has substantial experience preparing and prosecuting US and international patent applications, focusing in the areas of pharmaceuticals, biotechnology, medical devices, polymer chemistry and food science. Jim became a licensed pharmacist in New Jersey in 1989, and practiced pharmacy for two years prior to attending law school.
As senior counsel in the New York office, much of his practice is devoted to counseling corporate clients on how to protect their intellectual property by:
- preparing and prosecuting patent applications;
- rendering freedom to operate;
- validity and patentability opinions;
- advising clients on licensing agreements;
- advising clients on the protection of other proprietary interests such as know-how and trade secrets; and
- providing support for clients for patent infringement lawsuits.
Jim also advises numerous clients on strategic development, acquisition and transfer of their patent portfolios, including granting and obtaining license rights, protecting trade secrets, and product clearance issues. Jim also assists clients in strategic acquisitions of business units and IP assets that provide added value to their current positions and conducts related due diligence of IP portfolios as part of such acquisitions.
Professional experience
Collapse allJD, Seton Hall University School of Law, 1994
BS, high honors, Pharmacy, Rutgers College of Pharmacy, 1989
Jim is a registered patent attorney licensed to practice law in New Jersey in 1994 and in New York in 1995. He is also a registered pharmacist in New Jersey.
- New Jersey State Bar
- New York State Bar
- US Patent and Trademark Attorney
- Successfully prosecuted hundreds of patent applications to grant in various technical areas, primarily in the areas of pharmaceuticals, medical devices, nutraceuticals and food science
- Prepared numerous freedom-to-operate, validity and patentability opinions for clients in the areas of pharmaceutical, nutraceutical and food science
- Prepared and successfully prosecuted reissue patent applications and conducted reexamination proceedings for several clients in various technology areas
- Prepared and filed numerous successful appeal briefs before the BPAI for clients in a variety of technologies to successfully obtain reversal of initial rejections of patent applications resulting in the issuance of valuable U.S. patents for those clients
- Successfully argued an appeal before the USPTO Board of Patent Appeals and Interferences (BPAI) to obtain issuance of a patent for a major international film coating company
- Assisted clients with clearing new products through freedom to operate opinions prior to entering the market.
- Assisted clients to assert or defend against oppositions to European patents
- Successfully negotiated numerous license agreements for clients, including the licensing of patent rights covering protective gear to a major sporting goods manufacturer
- Provided litigation support for pharmaceutical, nutraceutical and chemistry clients who were plaintiffs or defendants in patent infringement lawsuits, including selection and preparation of expert witnesses and drafting of relevant invalidity and non-infringement opinions
- Conducted due diligence for a VC company in the initial acquisition of a patent and patent license assets from a major pharmaceutical company to form a portfolio company, and advised and assisted the portfolio company in successful multi-million dollar second round funding
- Assisted a nutraceutical company having a pending U.S. patent application successfully provoke a patent interference with a competitor having an issued U.S. patent that interfered with the clients patent rights, resulting in a favorable decision and the grant of valuable U.S. patent rights for the client
- Pro Bono Publico Award, New York Legal Aid Society, 2014 (conferred by the Legal Aid Society)
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- New York State Bar Association