James W. Repass
Partner
Norton Rose Fulbright US LLP
Related services and key industries
Biography
Jim Repass is Norton Rose Fulbright's US Head of Intellectual Property.
Jim's practice involves counseling clients with respect to the intellectual property aspects of various business arrangements including mergers and asset purchase acquisitions, joint ventures, joint research and development arrangements, licensing arrangements, and sales, distribution and service arrangements. In this regard, Jim has led numerous intellectual property due diligence investigations, negotiated numerous license agreements, joint venture agreements, merger and sale agreements, asset purchase agreements, joint research agreements, joint development agreements, sales, distribution and service agreements and confidentiality agreements.
Jim's practice also involves intellectual property litigation including patent, trademark, trade secret and copyright disputes. These representations involve cases both for plaintiff and defendants, including trying cases through appeal.
In addition, Jim counsels numerous clients with respect to their intellectual property strategies. This work generally involves managing the day-to-day aspects the clients' intellectual property estates, including conducting freedom-to-practice investigations, patentability investigations, developing intellectual property protection strategies concerning new product launches and analyzing possible infringement and misappropriation issues.
Professional experience
Collapse allJD, honors, George Washington University Law School, 1986
BS, summa cum laude, Chemical Engineering, The University of Tennessee, 1980
Jim was admitted to practice law in Texas in 1986 and is registered to practice before the United States Patent and Trademark Office.
- Texas State Bar
- US Patent and Trademark Attorney
Intellectual Property Transactional Experience
Mergers and Acquisitions Representations:
- Acquirer in its acquisition of semiconductor equipment quality control tools in a deal involving due diligence of target's technology and intellectual property estates, negotiation of bridging license agreement with detailed bankruptcy protection provisions, asset purchase agreement and key employee agreement
- Seller in the sale of part of its farm equipment business in a transaction that involved the negotiation of the asset purchase agreement, distribution agreement, research and development agreement providing for ongoing research by the parties at the seller's site
- Buyer in the purchase of assets from a Middle East company including conducting due diligence of the target's technology and intellectual property, negotiation of numerous employee and consultant agreements, and negotiation of asset purchase agreement
Joint Venture Representations:
- Venturer to further develop each party's individually-developed oil reserve data mining and analysis intellectual property, including conducting due diligence of the other party's technology and intellectual property and negotiation master joint venture agreement, commercialization agreement, transition services agreement and escrow agreement
- Venture in building products industry involving negotiation of the joint venture agreement, conducting due diligence of other venturer's technology and intellectual property, research and development agreement, and grant-back license
Research and Development Arrangements:
- Investor in its funding of the further technology development in the alternative energy areas, involving substantial due diligence of developer's technology and intellectual property and the negotiation of a master development agreement, master license agreement, secondment agreement, escrow agreement, funding agreement and guaranty agreement
- Two investors and developers of petrochemical technology, involving due diligence of third party developer's technology and intellectual property, conducting numerous freedom-to-practice analyses, and negotiation of master development agreement, license agreement and commercialization agreement
Other Transactional Representations:
- Semi-conductor company outsourcing a part of its manufacturing line in a transaction that involved master outsourcing agreement, facilities agreement, intellectual property transfer (both by license and assignment) agreement, escrow agreements and numerous agreements with third party licensees
- Manufacturing equipment company in a product line licensing and distribution arrangement addressing technology and intellectual property rights in various fields of use in various geographic areas, involving negotiation of master technology agreement, escrow agreement and database agreement
- Numerous clients in the negotiation of license agreement, software agreements, consulting agreement, confidentiality agreements, sales, marketing and distribution agreement, and intellectual property security agreements
Intellectual Property Litigation Experience
- Served as lead counsel for music trade association in anti-counterfeiting campaign against counterfeit music recordings, which settled after entry of a preliminary injunction and multiple seizures
- Served as lead counsel in representation of defendant in consumer products industry patent infringement lawsuit, which settled after patent invalidity challenge
- Served as lead counsel in multiple patent false marking cases, which settled favorably after constitutionality and pleading challenges
- Served as lead counsel for defendant in specialty chemical patent infringement lawsuit
- Served as lead counsel for plaintiff in medical industry in patent infringement lawsuit; judgment in favor of firm client
- Specialty patent counsel for defendant in consumer products industry in bankruptcy court patent infringement lawsuit
Intellectual Property General Counseling Experience
- Represents consumer products company for 10+ years as outside intellectual property counsel providing overall strategic advice regarding product clearance and protection, analyzing infringement issues, and consulting regarding research and development
- Represents transportation products company, and owner of a large trademark portfolio, regarding day-to-day trademark issues and various copyright and patent matters
- IP Star, Managing Intellectual Property, Euromoney Legal Media Group, 2013 – 2021
- Legal 500 US, Recommended Lawyer, Trademarks: non-contentious (including prosecution, portfolio management and licensing), The Legal 500, 2022
- Legal 500 US, Recommended Lawyer, Intellectual Property: Patent Litigation: Full Coverage, The Legal 500, 2013 – 2016, 2020 – 2021, 2023
- Legal 500 US, Recommended Lawyer, Intellectual Property: Trademarks: Non-Contentious: Full Coverage, The Legal 500, 2014 – 2015; 2021, 2023
- Client Service All-Star, BTI Consulting, Inc., 2012
- Chambers USA, Texas: Intellectual Property, Chambers and Partners, 2010 – 2023
- The Best Lawyers in America, Best Lawyers, 2006 – 2021
- Best Lawyers - Copyright Law, Best Lawyers, 2022 - 2024
- Best Lawyers - Litigation – Intellectual Property, Best Lawyers, 2022 - 2024
- Best Lawyers - Litigation – Patent, Best Lawyers, 2022 - 2024
- Best Lawyers - Patent Law, Best Lawyers, 2022 - 2024
- Best Lawyers - Trademark Law, Best Lawyers, 2022 - 2024
- Lawyer of the Year, Houston: Copyright Law; Best Lawyers, 2015, 2018, 2021
- Texas Top Rated Lawyer, LexisNexis Martindale-Hubbell, 2012 – 2014
- IAM Patent 1000, The World's Leading Patent Professionals, Intellectual Asset Management, 2012 – 2017; 2020 – 2021
- IAM Patent 1000, Transactions, Law Business Research, Ltd., 2022
- IAM Licensing 250, market leader in Texas for intellectual property, patent and technology licensing, IP Media Group, 2011
- Texas Super Lawyer, intellectual property litigation,Thomson Reuters, 2007 – 2020
- Co-author with Lucas Osborn, "Patently Illegal: What Taxpayers Should Know About Patented Tax Strategies;" Business Entities, Vol. 9, No. 2, pp. 22-29, March/April 2007
- "Bar Code and RFID Technology Help Manage Documents," Texas Lawyer, Sept. 25, 2006, Vol. 22, No. 30, pp. 22-23
- Co-author with Michael McCoy, "The Economic Espionage Act: How Companies Can Use It On The Offense," The Intellectual Property Strategist, Vol. 7, No. 2, pp. 1-4, December, 2000
- Co-author with Richard S. Zembek, "The Subject Matter of Patent Law: An Overview of Fundamentals and Potential Landmines," Institute on Intellectual Property Law for the Non-Intellectual Property Specialist, State Bar of Texas, March 21-22, 1997
- "Trade Secrets Under the New Restatement of Unfair Competition," Houston Intellectual Property Law Association/University of Houston Fall Institute, 1996
- "Economic Espionage Act;" American Bar Association, Section of Intellectual Property Law, 14th Annual Spring CLE Program, Patent, Trademark and Copyright Law: Litigation and Corporate Practice, April 12-13, 1999
- "Texas Trade Secret Update," Houston Intellectual Property Law Association and University of Houston Fall Institute, 1998
- "Copyright in the Digital World: Balancing Content Access and Content Protection," 13th Annual Intellectual Property Law Symposium, UT Law School, Austin, Texas, February 18, 2012
- "Analysis of Today's In re Bilski Decision from the Supreme Court: Its Impact on Patents from Business Methods to Biotechnology," Fulbright Web Seminar, June 28, 2010
- "Detailed Intellectual Property Issues in the Asset Purchase Agreement;" American Intellectual Property Law Association, 2009 Mid-Winter Institute Program, January 28-31, 2009
- "NTP, Inc. v. Research in Motion, Ltd.," Fulbright Web Seminar, June 15, 2006
- "Economic Espionage Act;" American Bar Association, Section of Intellectual Property Law, 14th Annual Spring CLE Program, Patent, Trademark and Copyright Law: Litigation and Corporate Practice, April 12-13, 1999
- "The Subject Matter of Patent Law: An Overview of Fundamentals and Potential Landmines," Institute on Intellectual Property Law for the Non-Intellectual Property Specialist, State Bar of Texas, March 21-22, 1997
- "Trade Secrets Under the New Restatement of Unfair Competition," Houston Intellectual Property Law Association/University of Houston Fall Institute, 1996
- American Bar Association
- American Intellectual Property Law Association (AIPLA)
- Houston Intellectual Property Law Association (HIPLA), former President
- Texas Association of Defense Counsel (TADC) - Intellectual Property Newsletter, former Editor
- Licensing Executives Society (LES)
- Annunciation Orthodox School, former Board of Trustee