James G. McEwen, Partner, received a Bachelor of Science degree in Aerospace Engineering from the University of Texas in 1993, and J.D. with honors from George Washington University National Law Center in 1996, where he was a staff member of the Public Contract Law Journal. Mr. McEwen is admitted to practice law in the Commonwealth of Virginia and the District of Columbia, and is registered to practice law before the U.S. Patent and Trademark Office.
Mr. McEwen has prepared and prosecuted patent applications in computer hardware and software, control systems, mechanical and optical devices, semiconductor manufacturing and manufacturing equipment, battery and battery manufacturing methods, data encoding and decoding methods and devices, and display device technologies. In addition, Mr. McEwen has prepared and been involved in patent validity and infringement opinions, reissue and reexamination proceedings, intellectual property licensing and settlement negotiations, intellectual property licensing with elements of the Federal government, trademark prosecution, domain name disputes, trade secret protection, and provided litigation support in patent infringement claims.
Mr. McEwen was previously employed as an intellectual property attorney with the U.S. government at the Naval Surface Warfare Center and Naval Air Systems Command, during which time he further specialized in the contractual procurement and management of intellectual property from third parties, negotiating and drafting special licenses for intellectual properties under standard Federal Acquisition Regulation and Other Transaction Agreements, litigation support, evaluating third party claims of infringement, reviewing invention disclosure forms and prosecution of original applications, and reviewing non-disclosure agreements.
Mr. McEwen further was editor of a Naval manual on use and procurement of technical data and software from third parties, evaluated and commented on proposed rules changes affecting government use and management of intellectual property, and helped draft the intellectual property section of "OTHER TRANSACTIONS" (OT) GUIDE FOR PROTOTYPE PROJECTS, (2001) for the Under Secretary of Defense for Acquisition, Technology and Logistics. Mr. McEwen also has experience from legal work at the Department of Energy, the Office of Federal Procurement Policy, and the Environmental Protection Agency. Prior to law school, Mr. McEwen had work experience in structural engineering and computer simulation of aircraft structures at E-Systems, located in Greenville, TX (now L-3 Communications Integrated Systems).
Mr. McEwen is a member of the American Bar Association, the American Intellectual Property Law Association, the Intellectual Property Owners Association, and the Intellectual Property Section of the Virginia State Bar. Additionally, he has been a member of committees working on antitrust and patent misuse, government contracts, intellectual property legislation, and trade secrets. Previously Mr. McEwen served as the Secretary for the Government Patent Lawyers Association (now entitled the Government Intellectual Property Law Association).
Publications
James G. McEwen, The Role of Intellectual Property in the Stimulus: Lessons Learned From the Use of IP Provisions in Recovery Act Assistance Agreements, the Procurement Lawyer, Vol. 46 No. 3 (ABA Section of Public Contract Law) (Spring 2011) (coauthor)
James G. McEwen, The Broadening Chasm Between Claim Interpretation During Litigation and Examination for Product-by-Process Claims, Landslide 3:4, March-April 2011 (ABA) (co-author)
James G. McEwen, Current Issues in the United States Intellectual Property Law: New Theories of Liability of Concern to Foreign Sellers, Vol. 4 Northeast Asian Law review 1 (December 2010).
James G. McEwen, The Broadening Chasm Between Claim Interpretation During Litigation and Examination for Product-by-Process Claims, Landslide 3:4, March-April 2011 (ABA) (co-author)
The Role of Intellectual Property in Stimulus: Lessons Learned From the Use of IP Provisions in Recovery Act Technical Assistance Agreements (American Bar Association 2010) (co-author).
Enforcing IP Against the Government, Intellectual Property & Technology Law Journal (November 2010)(co-author).
The Relevance and Use of Intellectual Property in Creating Ongoing Relationships with the Government Customer, a chapter in Inside the Minds: Navigating the Government Contracts Process (Aspatore Books) (2010 Ed.)
Demystifying the IP and Technology License in Government Contracts, 30 The Licensing Journal 6 (May 2010) (Aspen Publishers) (co-author)
The Impact of Monetization of Patent Rights on Patent Prosecution, Presented at the Seventeenth Annual Fordham Conference on Intellectual Property Law and Policy, Volume 11, July 2009 by Hart Publishing Ltd., Oxford.
INTELLECTUAL PROPERTY IN GOVERNMENT CONTRACTS: PROTECTING AND ENFORCING IP AT THE STATE AND FEDERAL LEVEL, (Oxford University Press)(2009) (co-author)
Strategic Responses To The Newly-Issued USPTO Continuation And Claim Limitation Rules, IPL Newsletter Volume 26, Number 1: Fall 2007
Strategic Responses To The Newly-Issued USPTO Continuation And Claim Limitation Rules (Oct. 2007)
Licensing Strategies After Medimmune: The Potential Impacts Of The Supreme Court Allowing Licensees In Good Standing To File Declaratory Judgments Against Licensors
(Jan. 2007)(co-author)
It’s Better Than You Think: Why Software Companies Should Consider The Government Market, Sterling Report (August 2006) (co-author).
Is The Cure Worse Than The Disease? An Overview Of Patent Reform Act Of 2005, 5 J. MARSHALL REV. INTELL. PROP. L. 55 (2005).
Clarifying The Clear: The Role Of Common Understandings In U.S. Patent Claim Interpretation, IPL Newsletter, Volume 23, No. 2 (Winter 2005) (coauthor)
Like Toddlers in Big Surf: Can the Government Control the Effects of Federal Trademark Liability?, 33 PUB. CONT. L.J. 209 (Fall 2003) (coauthor)
Intellectual Property Infringement Indemnification, Chapter 2 of Epstein: DRAFTING LICENSE AGREEMENTS (4th ed) (Aspen Law & Business 2002) and 2003-2005 and 2004 Supplements (coauthor)
Intellectual Property Infringement Indemnification, Chapter 7 of the 2002 INTELLECTUAL PROPERTY LAW UPDATE (Aspen Law & Business 2002) (coauthor)
“Other Transactions” With Uncle Sam: A Solution to the High-Tech Government Contracting Crisis, 10 TEX. INTELL. PROP. L.J. 195-220 (Winter 2002) (coauthor)
Drafting an Intellectual Property Express Indemnity Agreement: Thoughts and Strategy to Protect Against Unintended Consequences, X-12 INT’L LEGAL STRATEGY 66 (2001)
Presentations
Mr. McEwen has spoken and given presentations on intellectual property subjects for the National Academy of Sciences, the Korean Industrial Technology Association,
the District of Columbia Bar, the National Contract Management Association, the Department of Defense, the Government Intellectual Property Law Association, the District of Columbia Bar, the National Contract Management Association, and at intra-company seminars on patent strategy.
Examples of such presentations are as follows:
James G. McEwen, Overview of the Accelerating IP Acquisition Outside of Patents, Intellectual Property Congress for Green Energy Technology in San Francisco (April 28, 2011).
James G. McEwen, Regulatory and Government Issues in IP Licensing, Boston University School of Law in Boston (April 12, 2011)
James G. McEwen, Overview of the Impact of Government and Commercial IP on Modeling and Simulation Technologies at the 2011 Spring Simulation Interoperability Workshop for the Simulation Interoperability Standards Organization in Boston (April 8, 2011)
James G. McEwen, Understanding What Government Technology Contractors Cannot Ignore About IP: Overview of the Relationship Between IP and Government program before the District of Columbia bar (April 7 2011)
James G. McEwen, Understanding What Government Technology Contractors Cannot Ignore About IP: Subcontracts, and Preservation Techniques program before the District of Columbia bar (April 14 2011)
James G. McEwen, Overview of Stanford v. Roche and Bayh-Dole at the 26th Annual Intellectual Property Law Conference (April 6, 2011)
James G. McEwen, Protecting and Enforcing Intellectual Property Rights in Government Contracts, presented by Strafford Publications, Inc. (January 26, 2011).
Overview of the American Recovery and Reinvestment Act of 2009 presented at Intellectual Property in Government Agreements—What You Didn’t Learn In Kindergarten (Boston November 12, 2010)
Regulatory and Government Issues in IP Licensing presented at the Understanding the Intellectual Property License 2010 (Chicago 2010)
Lecture, Summer Intensive Lecture Course on U.S. Intellectual Property Law for the Hongik University Masters of Intellectual Property program (July 2010).
Current Issues In US Patent Law, presented at Hongik University as part of The International Conference For the Hongik MIP Inauguration (Seoul 2010).
Regulatory and Government Issues in IP Licensing at the Understanding the Intellectual Property License 2009 seminar presented by the Practicing Law Institute (San Francisco December 2009)
Successful IP Strategies for Using Public and Private Funding to Develop Commercial Solar Technologies: Overview of Intellectual Property and Government Contracts, Presented at SOLAR 2009 (May 2009)
An Introductory Guide to Patent Rights in Government Contracts, Presented before the Navy Office of General Counsel May 2009 Conference
An Introductory Intellectual Property Session for Federal Government Contractors, Before the Procurement Technical Assistance Center (August 21, 2008)
“Solicitations, Bids, Proposals, And Source Selection—Building A Winning Contract” A National Education Seminar, Before The National Contract Management Association, Johnstown Chapter (May 19, 2008)
Preserving Intellectual Property Rights in Government Contracts Series: A Beginner's Guide, as part of the D.C. Bar Continuing Legal Education Program (April 1 and 8, 2008)
Protecting and Enforcing IP Rights in Government Contracts: What You Don’t Know Will Hurt You presented November 13 and 27, 2007 by Strafford Publications, Inc.
An Introductory Guide to Preserving Intellectual Property Rights in Government Contracts: An Introductory Guide to IP for Federal Government Contractors to the National Contract Management Association, Silicon Valley Chapter (May 2007)
Preserving Intellectual Property Rights in Government Contracts: A Beginner's Guide, presented November 14 and 28, 2006 and sponsored by Strafford Publications, Inc.
Bridging the IP Gap in Public-Private Partnerships, Presented Before the Integrated Dual-use Commercial Companies (October 2006 Fall Meeting)
Patent Enforceability - Increasing the Odds, presented on October 12, 2006 and sponsored by Strafford Publications, Inc.
Preserving Intellectual Property Rights in Government Contracts: A Beginner's Guide, presented September 25, 2006 before the District of Columbia Bar
Understanding What Government Technology Contractors Cannot Ignore About Intellectual Property: An Introductory Guide to IP for Federal Government Contractors (Nov. 2005) & (May 2006)
Bridging the Gap In Public-Private Partnerships: Use of Creative Agreements to Resolve Intellectual Property Concerns, Presented to National Academy of Sciences (June 28, 2004)
The Intersection of Government Policy and the Lanham Act: The Increased Relevancy of Trademarks in Governmental Programs, Presented to Government Intellectual Property Lawyers Association 14th Annual Conference (March 22, 2004)
Recent Significant Rule Changes And Court Decision, And Strategies Of Applicants To Cope With These Changes, Presented to the Korean Industrial Technology Association (March 2001)