Jim K. Dawson practices in the areas of patent drafting, patent portfolio development, trademark registration and licensing matters. His practice also includes counseling on patent and trademark infringement. Representative technologies in Mr. Dawson’s practice include consumer electronics, semiconductor devices and manufacturing, micro-electro mechanical systems (MEMS), medical devices, green-energy devices, mechanical and electro-mechanical devices, electro-optical systems and aeronautical apparatus.
Mr. Dawson has over eleven years of experience drafting U.S. and international patent applications (“PCT” applications), Office Action responses, responses to Written Opinions and in providing guidance to foreign patent prosecution counsel. He also performs patent infringement and validity analysis. Mr. Dawson has over thirteen years of experience drafting and negotiating intellectual property licenses, including technology and product development agreements, service and consulting agreements, trademark licenses, non-disclosure agreements and other agreements necessary to bring ideas to market.
Prior to establishing the firm, Mr. Dawson was a Shareholder at Koppel, Patrick, Heybl & Dawson, PC, an Intellectual Property boutique firm in Ventura County, California, and as an Associate at Blakely Sokoloff Taylor & Zafman in Los Angeles, California.
Mr. Dawson has over five years of in-house experience as Senior Intellectual Property Counsel for Conexant Systems (formerly Rockwell Semiconductor Systems). While with Conexant, he was responsible for patent portfolio development, innovation harvesting and intellectual property training for engineers and management located at design centers in France, Russia, Canada, and the United States, resulting in over 400 U.S.-filed patent applications. He also developed U.S. and foreign patent filing strategies; drafted and negotiated complex technology development, non-disclosure, software distribution, and service agreements; performed patent infringement and validity analysis and performed due diligence investigations for M&A and divestiture activities.
Mr. Dawson currently serves as Vice President of the Intellectual Property Section of the Ventura County Bar (2007-present). He was named a “Rising Star” in Intellectual Property law in Southern California in a survey of his peers, published in Los Angeles Magazine and Super Lawyers Magazine, in both 2004 and 2005. He is a member of the Licensing Committee of the Intellectual Property Section of the State Bar of California and is a contributing editor for Drafting Business Contracts: Principles, Techniques & Forms, CEB 2006 – 2010. He is a member of the Los Angeles Intellectual Property Law Association, Orange County Patent Law Association and American Intellectual Property Law Association.
Mr. Dawson earned a Bachelor of Science degree from the School of Engineering and Applied Science at the University of California at Los Angeles (UCLA) in 1989, and earned his Juris Doctorate degree from the University of Dayton, Ohio in 1995. Following his undergraduate studies, Mr. Dawson joined Rockwell International as a Systems Test Engineer, where he worked on the main propulsion system of the space shuttle Endeavor.
Mr. Dawson is admitted to practice in California and before the Federal District Court, Central District. He is also registered to practice before the U.S. Patent and Trademark Office. He is a member of the California Bar Association.