James T. Carmichael

James T. Carmichael is experienced in intellectual property, including preparation and prosecution of patent applications worldwide. His practice encompasses patent and trademark litigation, opinions, licensing and appeals. Mr. Carmichael also serves as an expert witness and consultant in patent matters.

Before joining Miles & Stockbridge, he was the managing partner of Lyon & Lyon's Washington, D.C., office. Mr. Carmichael is a former Administrative Patent Judge and Examiner in Chief with the U.S. Patent and Trademark Office (USPTO), where he authored two hundred written opinions in patent cases. Before becoming a judge, Mr. Carmichael served for five years as associate solicitor at the USPTO. In that capacity, he represented the Commissioner of Patents and Trademarks in Federal Court litigation and argued more than 30 appeals at the U.S. Court of Appeals for the Federal Circuit.

Mr. Carmichael also worked at the U.S. Court of Appeals for the Federal Circuit as former Chief Judge Howard T. Markey's sole law clerk. In that position, he helped Judge Markey draft opinions issued by the Court in patent and trademark cases.

Mr. Carmichael has more than 22 years experience as an intellectual property lawyer. He is a frequent lecturer at bar associations on topics such as patent appeals.

Mr.Carmichael is a contributing author to the firm's Bilski Information Center concerning patentable subject matter.

• California
• District of Columbia
• United States Patent and Trademark Office

Education

University of Wisconsin, J.D. 1987, Cum Laude.

Yale University, B.A. 1984.

Intellectual Property & Technology

• Counseling
• E-Business & Technology
• Intellectual Property Disputes & Litigation
• Patents, Trademarks, Interferences & Prosecution
• Technology Transactions & Licensing

American Bar Association: Committee on Inventors, Chair (1996)

Association of Patent Law Firms: Secretary (2002)

"Ducking The Big Issues in Bilski?" Law360 (11/25/2009).

"Stakeholders Question Future of Business Method Patents After Bilski Oral Argument," BNA’s Patent, Trademark & Copyright Journal (Quoted) (11/13/2009).

"Beyond Affirmed: Will the Supreme Court Use In re Bilski to Restrict Patentable Subject Matter Even Further Than the Federal Circuit?" BNA's Patent, Trademark & Copyright Journal (Co-Author) (10/30/2009).

"Inequitable Conduct, Gross Negligence and the Kingsdown Decision," The John Marshall Review of Intellectual Property Law, Volume 8, Issue 4 (Co-Author) (Summer 2009).

"How to Preempt New PTO 101 Rejections," IP Law360 (February 06, 2009).

"Patents," New York Times (quoting Mr. Carmichael) (June 2002).

"Supreme Court Bolsters Protections for Patents," Los Angeles Times (quoting Mr. Carmichael) (May 2002).

"Supreme Court Supports Patent Protection," USA Today (quoting Mr. Carmichael) (May 2002).

"Patent Upending," Wired (quoting Mr. Carmichael) (June 2000).

"A Radical Approach to Drafting and Prosecuting Patent Applications," Northern Virginia Patent Lawyers Club, Reston, Virginia (February 2003).

"How to Win Appeals in Patent Cases," American Intellectual Property Law Association, Washington, D.C. (August 2002).

"Patent Prosecution Advanced Seminar Training," American Intellectual Property Law Association, Crystal Gateway Marriott Hotel, Arlington, Virginia (August 2002).

"The Supreme Court Hearing On Festo," Association Of Patent Law Firms, Washington, D.C.  (January 2002).

"Current Issues in Patent Law,' Association of Patent Law Firms, Washington, D.C. (Moderator) (October 2001).

"E-Commerce and Equivalence: Defining the Proper Scope of Internet Patents," George Washington University Law School, Washington, D.C. (October 2000).

"Patent Cases in Court," Orange County Intellectual Property Law Association, Costa Mesa, California (January 2000).

"Patent Law Fundamentals," Quinnipiac Law School, New Haven, Connecticut  (October 1999).

"Effective Appellate Advocacy," San Diego Intellectual Property Law Association, San Diego, California (September 1999).

"Winning Appeals in Patent Cases," Southwestern Legal Foundation, Dallas, Texas (November 1998).

"Arguing Appeals at the Board of Patent Appeals and Interferences," American Intellectual Property Law Association, Houston, Texas (Moderator) (May 1998).

"Appealing PTO Decisions to Court," American Intellectual Property Law Association, Chicago, Illinois (June 1996).

"Ethical Issues in Prosecution Before the Patent and Trademark Office," U.S. Patent and Trademark Office Legal Lecture Series, Arlington, Virginia (June 1996).

"Ethics in Arguing Cases at the U.S. Court of Appeals for the Federal Circuit," Federal Circuit Bar Association, Washington, D.C. (May 1996).

"Patent Appeals," Los Angeles Intellectual Property Law Association, Los Angeles, California (October 1995).