James C. De Vellis

Partner

James C. De Vellis

Partner

James De Vellis is an intellectual property lawyer focusing on patent portfolio development, related counseling, and post-grant practice. He is a partner in the firm’s Electronics and Patent Office Trials Practices and chair of the Intellectual Property Department in Foley’s Boston office. He is also a member of the CleanTech, Energy Transition, Automotive, Hydrogen, and Innovative Technology Sector Teams, as well as the firm’s Environmental, Social, and Governance (ESG) Team.

James’ strategic patent portfolio development practice includes thoughtful preparation and worldwide prosecution of patent applications to build effective IP portfolios. He helps innovators secure both offensive and defensive patent protection, enabling them to operate in their intellectual space on their terms.

James practices to advance clients’ business objectives by developing sustainable patent portfolios and by acting as a check on competitors’ patents that encroach beyond their appropriate boundaries. He is active in the areas of electric vehicle technology, batteries and battery system management, autonomous technology, energy transition, medical devices, AgTech, clean water tech, power grid management, internet services, voice-based devices, and other innovative spaces.

James has experience in foreign jurisdictions to complement his U.S. patent portfolio development practice. He also prepares non-infringement and freedom-to-operate opinions for industry leaders, represents clients in appeal proceedings before the U.S. Patent and Trademark Office, and guides clients through European patent portfolio development matters. James has previously lived and worked as a U.S. patent lawyer in Europe for an Italian firm, where he focused on worldwide patent procurement and portfolio development.

Prior to entering intellectual property law, he was employed as an electrical engineer for a major brushless DC disk drive motor manufacturer.

 

Representative Experience

  • Developed and managed multiple large patent portfolios and related strategy for multiple corporations in the electric vehicle and autonomous vehicle space.
  • Developed and managed the patent portfolio of a multinational corporation that provides Internet-related products and services, including voice-activated products.
  • Developed and managed the patent portfolio of a cleantech corporation that provides power grid management and related technologies.
  • Developed and managed the patent portfolio of a cleantech corporation that manages water treatment facility control systems.
  • Developed and managed the patent portfolio of a cleantech corporation that manages second life energy storage and control systems.
  • Developed and managed the patent portfolio of multiple medical device corporations that develop neurological simulation devices, orthopedic surgical devices, joint replacement devices, automated external defibrillators, and smart wearable devices, among others.
  • Developed and managed the patent portfolio of multiple AgTech corporations that develop farm management software and related products.
  • Developed and enhanced the patent portfolio of a corporation that provides construction and specialty services to the telecommunications industry.
  • Counseled a telecommunication company regarding a network switching and routing patent portfolio through a series of reexamination proceedings conducted in parallel with both multiple patent litigations and continued patent prosecution.
  • Developed and enhanced the patent portfolio of a power supply company in the fields of uninterruptible power supplies, voltage converters, data centers, and communications within and between data centers.
  • Counseled a machine vision innovator regarding image registration technology through a series of reexamination proceedings.
  • Developed and enhanced the patent portfolio of a telecommunications company in the field of mobile-to-mobile network transmissions involving tandem free signal oscillation, lawful interception of data in broadband networks, end user location related data interception, personalized ring back tone interception over mobile networks, and sector antennas.
  • Developed and enhanced the patent portfolio of a video processing company in the field of interlaced video motion detection, block artifact removal, and video signal processing.

 

Awards and Recognition

  • Foley’s Carl Hitchner Mentor of the Year Award (2022)
  • The Legal 500, patent prosecution (2015)

Affiliations

  • Chair, WorldBoston
  • Board of Directors, Canadian Entrepreneurs of New England
  • Board of Directors, New England Canada Business Council
  • Member, Boston Patent Law Association
  • Member, American Intellectual Property Law Association
  • IP Mentor for Canadian Technology Accelerator program, Foresight CleanTech Accelerator, District 3 Innovation Hub, SVG Ventures Thrive AgTech Accelerator, Greentown Labs, among others

Presentations and Publications

  • Presenter, “IP Strategy Workshop: Using Your IP to Achieve Business Objectives,” Dynamo Energy Hub April Founders Forum, April 18, 2024
  • Moderator, “Great Decisions | Energy Geopolitics,” WorldBoston, December 13, 2023
  • Presenter, “Protecting Your Intellectual Property,” Canada/Ontario Autotech Canadian Technology Accelerator, October 10, 2023
  • Presenter, “Climatetech Canadian Technology Accelerator – Intellectual Property Session,” Climatetech Canadian Technology Accelerator, October 4, 2023
  • Presenter, “Cleantech IP Strategy and Development to Achieve Business Objectives,” Greentown Labs, October 3, 2023
  • Moderator, “Commercial Opportunities for Hydrogen to Serve Hard-to-Abate Industrial Applications,” Infocast Hydrogen Hubs: Building a Financeable Value Chain, August 30, 2023

Languages

  • Italian (conversant)
  • Portuguese (basic)
14 October 2024

The Fast Follower’s Guide to Recent AI Law

As investors, entrepreneurs, and engineers supercharge the development of artificial intelligence to the tune of US$184 billion in 2024, this new era will create both winners and losers.
01 October 2024 Energy Current

Climate Week 2024 Recap

It was a remarkable week of unrivaled events at New York’s Climate Week 2024.
29 July 2024 Innovative Technology Insights

How to Patent AI-Assisted Inventions: USPTO Guidance Highlights Importance of Understanding the ‘Significant Contributions’ Standard

The ability to patent inventions developed with the use of AI hinges on the “significant contribution” of a human, but that standard is still in the process of being refined.
20 May 2024 In the News

Evan Glass and James De Vellis Author Article on IP Protection in Clean Energy

The authors assess the influence of government incentives in clean energy innovation, the industry’s growing prominence, the value in securing protection for intellectual property assets in the sector, and suggested next steps for companies in the space.
16 May 2024 Events

MedTech Sustainability Forum

Foley partner, David Rosen is speaking  on a panel at the MedTech Sustainability Forum on “Sustainable Practices for Medical Device Product Design and Manufacturing Strategies: Recover, Reprocess, Reuse, Remanufacture.”
09 May 2024 Energy Current

IP Considerations For Companies In Carbon Capture Sector

When thinking of archetypal unicorns in the technology sector, carbon capture is rarely top of mind. However, a December report