International

TRADE SECRET

Expert

Inductee 2016

Deputy Director General
2009 - 2014

President 2007 -2008

TRADE SECRETS & PATENTS

Jim stands out among global experts for his deep understanding of both trade secrets and patents from a legal and operational perspective. Present at the birth of Silicon Valley in the early 1970s, Jim has handled hundreds of trade secret and patent disputes, whether as lead counsel trying cases to verdict or as trusted advisor helping his clients avoid or resolve litigation. His keen appreciation for the relationship between these two areas of intellectual property also comes from decades of leadership and public advocacy, as well as his publication of major works in each field. With the strategic balance between patenting and secrecy shifting for most companies, Jim’s unique experience is particularly valuable.

IP TRAILBLAZER

Challenging assumptions and solving problems creatively have always been a part of Jim’s professional life. He published his first trade secret book in 1982. Soon after, he launched one of the first law school courses dedicated to trade secrets. He helped draft the Defend Trade Secrets Act of 2016 and was declared “instrumental” to its passage by one of the bill’s sponsoring senators. He was the first litigator to take a major software patent case through to a jury verdict (his successful defense of Adobe Photoshop® in 1997). He was the first trade secret specialist to be elected president of AIPLA and the first to be inducted into the IP Hall of Fame. He conceived and scripted the video that is now shown to patent juries throughout the country. He was co-author of the first edition of the Patent Case Management Judicial Guide. And at WIPO, he developed and successfully implemented a transformative project to bring the PCT application process online.

GLOBAL EXPERIENCE

Jim sees business through an international lens, having had responsibility for patents and trade secrets during his term as Deputy Director General of the World Intellectual Property Organization in Geneva. His executive mandate included day-to-day management of the international patent system, overseeing a staff of 400 from 60 countries to ensure the confidential treatment of hundreds of thousands of patent applications. His diplomatic duties ranged from overseeing treaty negotiations to helping many of the world’s largest companies and institutions whose innovation strategies were driven by both patenting and secrecy. Jim's global contribution continues as co-chair of the Trade Secret Task Force of the International Chamber of Commerce.

Meet Jim Pooley

LITIGATOR

EXPERT

CONSULTANT

NEUTRAL

SPEAKER

Jim frequently serves lead counsel in major trade secret litigation as an experienced and trustworthy advisor, a member of the team who combines his scholarship and practical experience to add unique value. Company counsel rely on Jim to help investigate and assess potential or ongoing disputes. Due to his unique background, his clients benefit not only from his expertise but also from the efficiency that comes with over forty years of practice in this field. Trade secret cases by their nature can be unpredictable and difficult to manage, so it helps to have a steady, independent source of seasoned advice. Jim can apply his independent perspective at any phase of a case, but may be particularly helpful as settlement counsel in mediation, allowing lead counsel to maintain the traditional role of advocate.

“Jim’s guidance will illuminate the way for all.”

-Honorable Paul Michel, Chief Judge (Ret.), Federal Circuit Court of Appeals

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TRADE SECRET PHILOSOPHY

The world of registered intellectual property rights — patents, copyrights, trademarks, and designs — is relatively predictable. Companies negotiate with the government and have their rights described in an official certificate. Comparatively, trade secrets encompass the totality of a company's useful data, and are often not defined until there is a dispute. Trade secret law exists in the space between legitimate competing interests: employers need to be able to trust their employees with access to sensitive data, and employees need new job opportunities to further their careers. Jim Pooley is a global expert on trade secrets, who aims to contribute to better understanding, within both the legal and business communities, about the nature of this increasingly valuable but vulnerable asset class. His philosophy on trade secrets is informed and shaped by decades of IP experience in Silicon Valley, as well as his global leadership, public advocacy, and authorship. [Read More]

"Trade secret law is about ethics in business"

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Most Recent Newsletters

Books

SPEAKING EVENTS

Licensing Executives Society International Webinar, "COVID-19 TRIPS Patent Waiver"

October 7th, 2021

Virtual Webinar

International IP Practice Seminar at University of Illinois Chicago Law School, “Intersections in International IP Law, Policy and Practice"

October 8th, 2021

Virtual Webcast

Advanced Trade Secrets Law 2021: New Risks, New Challenges, New Ideas

October 13th, 2021

Live Webcast

Nevada State Bar 2021 Intellectual Property Law Conference, "Trade Secret Management – Presenting Virtually"

October 15th, 2021

UNLV Boyd School of Law

Practice Law Institute IP Institute, "Trade Secret Update"

October 19th, 2021

San Francisco, CA

Licensing Executives Society International – Silicon Valley, "Incorporating Trade Secrets into Corporate IP Programs"

October 26th, 2021

Silicon Valley, CA

AIPLA 2021 Trade Secret Summit, "Trade Secret Identification & Working with Experts in Trade Secrets Litigation"

November 8-9th, 2021

Austin, TX

18th Annual Stanford Digital Economy Best Practices Conference, "AI, IP, and Data Interoperability"

November 12th, 2021

Palo Alto, CA

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