James Aquilina

Strategic advising relating to inventions, brands, product designs and artistic works

James Aquilina advises his clients on intellectual property (IP) procurement, strategic portfolio development and management, offensive and defensive dispute matters, licensing and anti-counterfeiting efforts. An internationally recognized IP strategist and leader in the field of U.S. design law, he counsels industry-leading and emerging clients in the areas of utility and design patents, trademarks, copyrights and trade secrets. His representative clients include global companies in the fields of:

• Personal apparel, including footwear and clothing
• Consumer packaged goods, including games and puzzles
• Medical devices
• Home furnishing
• Software

James takes the time to understand his clients’ businesses and ensure the legal solutions he and his team deliver align with business purposes. He is a true partner to the companies he represents and provides guidance that is clear, succinct and actionable.

James is the co-founder and editor in chief of Quarles’ Protecting the Product blog, which focuses on design-related legal rights.

• Builds comprehensive IP portfolios. Given his unique background as a cross-functional patent, trademark and copyright lawyer — coupled with his knowledge in the niche design rights field, which regards the intersection of design patents, trade dress and copyrights embodied in useful objects — he is uniquely qualified to spot issues and build complete IP portfolios for his clients.
• Knows the international treaties that govern various forms of IP. His international perspective allows James to put clients in optimal situations to protect their intellectual properties on a global scale.
• Handles patent appeals and reexamination proceedings before the Patent Trial and Appeal Board (PTAB) and trademark opposition and cancellation proceedings before the Trademark Trial and Appeal Board (TTAB). James has represented clients in numerous fully briefed cases resulting in final decisions.

• Successfully secured design patent and trade dress registrations for various packaging and product configurations in the U.S. and multiple foreign jurisdictions.
• Using a creative approach, obtained design patents for a client from a pending utility patent portfolio that was facing final rejection, ensuring 15 years of patent protection for the appearance of the client’s flagship product.
• Led a successful, multinational anti-counterfeiting campaign for a client, working closely with local customs agencies, in pursuit of infringing product copies and counterfeits. These efforts leveraged utility patents, design patents and trademarks, and led to the cessation of the infringing activity in all countries.