James A. Oliff

Oliff PLC
277 South Washington Street
Suite 500
Alexandria, Virginia 22314

Telephone: (703) 836-6400
Facsimile: (703) 836-2787

Email: joliff@oliff.com

Position

Member

Practices Areas

Biomedical, Computer Science, Litigation, Mechanical, Trademark

Admitted

Virginia, 1975
Maryland, 1973
U.S. Supreme Court, 1993
U.S. Court of Appeals, Federal Circuit, 1982
U.S. Court of Appeals, 3rd Circuit, 1982
U.S. Court of Appeals, 4th Circuit, 1979
U.S. Court of Federal Claims, 1993
U.S. District Court, Eastern District of Virginia, 1979
U.S. District Court, District of Maryland, 1991
U.S. District Court, Eastern District of Michigan, 1985
U.S. District Court, Western District of Michigan, 1993
U.S. District Court, Eastern District of Wisconsin, 2009
U.S. Patent and Trademark Office, 1974

Education

Georgetown University Law Center, Washington, DC, 1973
J.D., Juris Doctor

University of Maryland, College Park, MD, 1967
B.S.A.E., Bachelor of Science in Aerospace Engineering

Publications

"Patent Versus Copyright Protection for Computer Software Under United States Law," Law Commission Report No. 13: Intellectual Property: The Context for Reform, pp. 91-107, March, 1990

Classes/Seminars Taught

Lecturer, 35 U.S.C. Section 103-Nonobviousness, Patent Academy, United States Patent and Trademark Office, 1972-1974

Presented, "The New United States Law on Duty of Disclosure", International Association for the Protection of Intellectual Property, Tokyo, Japan, 1979

Presented, "The Best Mode Requirements of 35 U.S.C. Section 112", International Committee of JPAA (Japanese Patent Attorneys Association), Tokyo, Japan, 1979

Presented, "Pre-Litigation Opinions in U.S. Patents Suits", 67th Annual Meeting of the Patent and Trademark Institute of Canada (Paper reported in the 10 Canadian Intellectual Property Review 3, pp. 661-666), Quebec, Canada, 1993

Presented, "Determining Patent Claim Scope and Infringement in the United States-Shifting Roles of Judges and Juries", 114th Annual Mtg. of the Chartered Institute of Patent Agents of the United Kingdom (Paper reported in the 25 Chartered Institute of Patent Agents Journal 6, pp.393-412), London, England, 1996

Presented, "The Rocket Docket" (a summary of the procedures and practices before the United States District Court for the Eastern District of Virginia), Annual Meeting of the Rochester Intellectual Property Law Association, Rochester, New York, 1996

Presented, "Practical Points in Drafting and Prosecuting Patent Applications in Consideration of Patent Litigation and Licensing", Tokyo, Japan, 2011

Presented, "Patent Trolls: An "Offensive" Defensive Strategy", Tokyo, Japan, 2011

Presented, "Claim Drafting", Osaka, Japan, 2012

Past Positions

United States Patent and Trademark Office, Patent Examiner, 1968-1973

United States Patent and Trademark Office, Lecturer, U.S. Patent Academy,
35 U.S.C. §§ 102 and 103, 1968-1973

United States Patent and Trademark Office, Board of Appeals,
Law Clerk, 1973-1974

Affiliations

American Intellectual Property Law Association - Member
International Trademark Association - Member
Federal Circuit Bar Association - Member
International Trade Commission Trial Lawyers Association - Member
Alexandria Bar Association - Member
Licensing Executives Society - Member
American Bar Association - Member
Sections of Litigation, Practice and Intellectual Property - Member
Maryland State Bar Association - Member
Virginia State Bar Association - Member
Intellectual Property Owners Association - Member

Honors

Tau Beta Pi - U.S. National Engineering Honor Society
Sigma Gamma Tau - U.S. National Aerospace Engineering Honor Society