James A. Cooke, III, PhD

My focus

I counsel financial institutions, technology companies, and emerging startups on the development, implementation, and protection of distributed-ledger and blockchain technologies, smart contracts, machine learning and artificial intelligence models, post-quantum cryptographic algorithms, payment systems, and innovative cryptocurrency and token technologies.

I also have extensive experience counseling clients in patent, trademark, and copyright matters related to software, mobile applications, electronic trading platforms, graphical user interfaces, content management and delivery systems, Internet-of-Things (IoT) technologies, and video compression and image processing technologies. 

During the course of my career, I have helped numerous companies draft and prosecute hundreds of patent applications and assisted clients with strategically building and managing their portfolios. I help clients extract value from their portfolios through licensing and other strategies, and have represented clients in proceedings before the Patent Trial and Appeal Board. In addition to my experience in the FinTech space, I also regularly counsel clients in the life-sciences industry on the patent eligibility of computer-implemented diagnostic tools and computer-implemented gene-editing tools before the US and foreign patent offices.

I have also served as a visiting researcher at the IBM Thomas J. Watson Research Center, concentrating on the development and implementation of solutions to complex fluid-dynamic and chemical-kinetic problems across massively parallel, distributed-memory computing systems.

Representative experience

*Representative experience includes matters handled at previous firms.

• Counsel a multinational financial institution on US and foreign patent matters related to blockchain technologies, payment systems, machine learning and artificial intelligence, and digital banking technologies; assist in strategic planning and invention harvesting, and manage a patent portfolio of over 250 US and foreign patents
• Represented a financial services client in patent matters related to computerized systems for establishing, trading, and market-making in actively managed exchange traded funds (ETFs)
• Assisted a large technology company in strategic planning, negotiation, and closing of a US 1.056 billion patent deal involving a sale of over 800 US and foreign patents and a grant of a portfolio license
• Counseled clients on patent matters related to computerized platforms for exchanging digital tokens for real-world products
• Assisted clients in the preparation of technical white papers in support of initial coin offerings (ICOs) for computerized trading platforms and token technologies
• Counseled clients on US and foreign patent matters related to image processing technologies and adaptive control of digital cameras
• Represented patent owner, PatentRatings, LLC, in a covered business method (CBM) proceeding before the Patent Trial and Appeal Board (PTAB); obtained a favorable PTAB decision that denied institution of the CBM proceeding

Looking ahead

Financial services and FinTech organizations need to develop and further refine their IP portfolios to address, and to protect, their innovative activities, especially within the machine-learning (ML) and artificial intelligence (AI) spaces and within the digital asset and cryptocurrency spaces.

Insights

• “Understanding Cryptocurrencies and Blockchain Technologies: Separating Fact from Fiction,” Miami, Florida, March 2, 2018
• “Cryptocurrencies and Blockchain Technologies: Separating Fact from Fiction,” Miami, Florida, March 1, 2018
• “Helping Financial Technology (FinTech) Companies Compete in the US,” CLE Seminar and Webinar, New York, New York, November 16, 2017
• “Demystifying the Blockchain: Protecting Distributed-Ledger Technologies in the Financial Services Industry and Beyond,” Washington, DC, May 11, 2017