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.
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.
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.
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]