Jack has always had a passion for working with his hands. From his teenage years building his own Ham Radio equipment, to self-teaching automotive repair and maintenance, to the design and development of avionic communication systems as an engineer for the Department of Defense, Jack always enjoyed technical challenges. His passion for technology and innovation is even stronger today after many years refining his deep expertise in patent and intellectual property law. He has been named among the Best Lawyers in America© for patent law since 2015.
Previously, Jack was an engineer for over 20 years concentrating in the areas of digital circuit and system design. During his time as a practicing engineer, Jack focused his efforts in a variety of high tech areas including advanced airborne communications systems, shipboard systems for the processing of threat data, avionics simulators and hardware/software integration. Jack received numerous commendations as an engineer and was singled out for his design role during the development of an updated version of Presidential Helicopter Squadron, Marine One.
How Jacques Helps Clients
Copyright
During his career, Jack has assisted clients in preparing copyright applications for various types of works, including books, artwork, games and pamphlets. Another primary area of Jack’s copyright practice includes works-made-for-hire and establishing ownership of those works in the name of the hiring employers. His litigation experience has also touched upon copyright issues, providing a rounded base of experience from which to assist clients with procurement, enforcement and counseling related to copyrights.
Trademarks & Patent Procurement
Jack has been successful in opposing and canceling the trademarks of his client’s competitors as well as reaching advantageous settlements with his client’s competitors where prudent. Jack has spoken on numerous occasions to professional organizations and clients on the growing area of business method patent procurement. Jack also participates in training programs for new patent attorneys and patent agents.
Trade Secrets
Jack has been called upon to prepare non-disclosure agreements to protect the trade secrets of his clients as they explore potential partnerships or joint developments. He has also prepared agreements that outline the obligations that his client’s employees/inventors owe their employer. Often, he has been called upon to counsel clients on the tension between maintaining an invention as a trade secret versus filing a patent application for the invention.
Litigation
Jack has successfully represented both plaintiffs and defendants in litigation in patent and contractual matters. He often represents clients in patent cases dealing with diverse subject matter as design patents, computer software patents and software copyright issues, as well as trademark, unfair competition and theft of trade secret cases relating to software, know-how and customer lists.
Jack’s experience in dealing with complex engineering issues allows him to readily adapt to the rapid changes commonplace in litigation situations.
I enjoy working with my clients on their cutting edge developments, and helping make those designs and innovations become a reality.
What Clients Can Expect
Jack has a very close working relationship with his clients. Having been a practicing engineer for over two decades Jack understands the challenges faced in developing new devices and processes. Jack likes to “roll up his sleeves” and really get into the technology when working with his clients. He is also focused on making sure that he understands their commercialization goals in order to provide the counseling they require.
Outside the Office
Jack is a lifelong resident of the Philadelphia region, and lives in a quiet suburb with his wife. He is very active in a local car club and enjoys working on a classic Corvette during his down time. He has also attended a few high performance driving schools in various parts of the country.
Jack also enjoys going to some of the local (and not so local) music venues with his wife to listen to music from well-known, and some up and coming, artists.
Proof Points
Graphic Security Systems Corporation v. JuarTrade, KFT. , Civil Action No. 98-8028 (S.D. Fla 1998) (Copyright/Contract dispute)
Dutailier International Inc. & Groupe Dutailier Inc. v. Stoneville Furniture Co., Inc. & Towne Square Furniture Inc. , 99-CV-920 (D. Del. 1999) (Settled and Case Dismissed 2000) (design patent infringement of glider rocking chairs).
Premier Mill Corporation v. Netzsch Incorporated, 99-CV-5970 (E.D. Pa. 1999) (Settled and Case Dismissed 2000) (Patent Infringement).
Kleerdex Company v. TC Millwork, Inc., Cancellation Proceeding 32,098 (TTAB 2001) (petition granted to cancel Registration No. 2,400,181 for VIDEX)
Kleerdex Company v. TC Millwork, Inc., Cancellation Proceeding 91-150013 (TTAB 2001) (petition granted to cancel application Serial No. 76/079,580 for VYDEX)
Kleerdex Company v. Skydex Technologies, Inc ., Opposition Proceeding Opposition Proceeding 91-153029 (TTAB 2002) (dismissed per agreement of the parties)
Technologies, Inc ., Opposition Proceeding Opposition Proceeding 91-153297 (TTAB 2002) (dismissed per agreement of the parties)
Temple University Beasley School of Law, J.D.
Drexel University, M.S., Electrical Engineering
Drexel University, B.S., magna cum laude , Electrical Engineering
- New Jersey
- Pennsylvania
- U.S. Court of Appeals for the Eleventh Circuit
- U.S. Court of Appeals for the Federal Circuit
- U.S. Court of Appeals for the Third Circuit
- U.S. District Court for the Eastern District of Pennsylvania
- U.S. Patent and Trademark
American Intellectual Property Law Association, Board of Directors (2016-2019); AIPLA Fellow (2015-present);Chair, 2017 Mid-Winter Institute Committee (2016-2017) ;Chair, Professional Programs Committee (2013-2015) ;Vice Chair, Professional Programs Committee (2012-2013) ;Chair, Program Development Subcommittee of the Professional Programs Committee (2011-2012);Coordinator, Professional Programs Comm.(2007-2012; 2016-Present);Chair, Electronic & Computer Law Committee (2010-2012); Vice Chair, Electronic & Computer Law Comm. (2008-2010);Co-Chair, Professional Programs Subcommittee of Electronic & Computer Law Committee (2006-2008); Chair, Info. Dissemination Subcommittee of Electronics & Computer Law Committee (1999-2006) ;Sec., Electronics & Computer Law Committee (1998-2002)
Philadelphia Intellectual Property Law Association, Chair, Computer Practice Committee (2003-2005); Member, Board of Directors (2006-2008); Benjamin Franklin American Inn of Court ;President Emeritus;President (2008-2009) ;President-Elect (2007-2008) ;Vice President (2006-2007) ;Secretary/Treasurer (2005-2006) ;Board Member (2002-2005)
American Bar Association
Pennsylvania Bar Association
Philadelphia Bar Association
Chester County Bar Association
Federal Circuit Bar Association
Institute of Electrical and Electronic Engineers