James Remenick

Dr. James Remenick has an active practice in all aspects of intellectual property protection and enforcement including litigation, prosecution, licensing, opinions, consulting, and counseling. His clients include companies ranging in size from start-ups to multinational corporations, as well as research institutions, universities and investment houses. His work includes fields as wide ranging as medical screening, pathogen detection, drug development and pharmaceuticals, medical devices, new consumer products, nanotechnology, material science, solar and other renewable energy technologies, advances in disaster relief technology, data communications systems, Internet advertising, blast-resistant construction technology, vaccine technology, chemistry and biochemistry, intraocular lens technology, immunology, genomics, diagnostics, plant pharmaceuticals, nutraceuticals, organics recycling, and energy conservation, to name a few. In his practice, Dr. Remenick is experienced in enforcing the intellectual property rights of clients, and in protecting those rights before various United States District Courts and Courts of Appeals, and also the United States Patent and Trademark Office, the U.S. Copyright Office, and, with our associate attorneys, foreign patent and trademark offices around the world including the European Patent Office and other similar national and international agencies.

Dr. Remenick works strategically to develop and maximize the intellectual property of his clients, matching promising technology with concrete protection. His approach with small and emerging companies is to act as outside general counsel for intellectual property, identifying potential technology, securing appropriate protection, moving forward with strategic planning, and, as needed or desired, negotiating licensing and research and development agreements including CRADAs and other government contracts. Dr. Remenick’s work includes due diligence investigations of potential acquisition and investment targets, positioning in preparation for product launch including freedom to operate studies, coordination of intellectual property issues with matters before the U.S. Food and Drug Administration, the Federal Communications Commission, the National Institutes of Health, the international launch of new products and services in association with the U.S. Chamber of Commerce and other government agencies, and strategic litigation and licensing with entities in the United States and countries including Australia, Canada, China Germany, Japan, Norway, the U.K., and many others. In all cases, Dr. Remenick establishes long-term relationships with clients by developing and maximizing their intellectual property portfolio to meet immediate and ever-changing future goals.

In conjunction with his practice as an attorney, Dr. Remenick works in various aspects of the community. For example, Dr. Remenick was a member of the U.S. Defense Science Board Subcommittee on the Defense Against Biological Attacks. Dr. Remenick served as an advisor in an investigation of the 2002 anthrax attacks on the U.S. Capitol. Dr. Remenick also served as a consultant to the intellectual property committee of various universities and institutions, and obtained a security clearance from the U.S. Department of Defense to work on certain classified matters. In addition, Dr. Remenick works with not-for-profit institutions to establish programs and procedures to identify and secure protection for possible inventions.

Dr. Remenick received a Ph.D. from the Department of Microbiology of the Uniformed Services University of the Health Sciences, and spent four years as a medical researcher and an American Cancer Society post-doctoral fellow at the Laboratory of Molecular Virology of the National Cancer Institute at the National Institutes of Health. His work focused on the molecular mechanics associated with tissue specific transcription using viral models.

Recent professional activities:

Lead attorney on licensing team developing technology internationally including negotiating licenses in the U.S., China and India.

General IP counsel of start-up drug development company.

General IP counsel of company developing delivery technologies working in the area of disaster relief.

Board member of virtual reality development company.

Lead attorney strategically positioning new product development of a public corporation so as to avoid patent infringement.

Successfully led reexamination and ultimate determination of patent invalidity for clients faced with allegations of patent infringement.

Successfully prosecuted a reexamination for a client’s patents resulting in the issuance of both the original and additional claims that even more directly target an infringer’s activities.

Lead IP attorney representing quasi-government entity in bid proposal to provide broad-band service to a large metropolitan region.

Lead attorney in an infringement action representing the patent owner against a public company over a patented Internet advertising system resulting in a successful settlement agreement.

Lead US attorney in appeal of patentability determination before the EPO.

Negotiated research agreements between a small start-up and a large international telecommunications corporation for developing access to medical information by cell phone.

Successfully defended client against allegation of copyright infringement.

Successfully negotiated multiple license agreements between a U.S. company and various Japanese corporations for the application of carbon nanotube technology in touch screens and monitors.

Trial consultant analyzing the legal positions of the parties for financial research corporations and hedge funds on various U.S. and non-U.S. trials including Pfizer v. Ranbaxy (Lipitor), Sanofi Aventis/BMS v. Apotex (Plavix), Wyeth v. Teva (Effexor), Abbott v. Andrx (Biaxin), Merck v. Integra (RGD Peptide patents), Boston Scientific v. J&J (drug eluting stents), unnamed action (VEGF Trap fusion proteins).

Lead attorney representingd client in contract and FOIA disputes with the U.S. Department of Justice.

Successfully negotiated a long-term license between U.S. hospital and genetic analysis company for access to patient tissues and medical records for development of new medical treatment paradigms.

Represented a large German corporation in strategic positioning and development of patent rights in the field of plant biotechnology.

Lead attorney representing successful defendant in trademark infringement suit in U.S. District Court for the District of Columbia.

Successfully positioned a trademark client to avoid imminent infringement litigation.

Successfully defended trademark client from cybersquatting attack.

Represented start-up genetic database company in strategically protecting millions of newly identified genetic sequence information.

Lead U.S. attorney representing successful U.S. defendant in coordinated infringement suits in U.S., U.K., and Australia over patents to sterilization indicators.

Represented U.S. and non-U.S. investors in intellectual property due diligence investigations of target biotechnology companies.

Represented biotechnology companies in meeting intellectual property due diligence demands of potential investors.

Represented start-up companies in the fields of recycling, energy, carbon nanotubes technology, biotechnology, electronic data mining, sensor technology, chemical disinfectants, genetic therapy, medical hyperspectral imaging, electronic medical record technology, personal security, and many others.

Lead attorney representing successful defendant in coordinated infringement suits in the U.S. District Court for the
Eastern District of Virginia, and the U.S. Court of Appeals for the Federal Circuit, over patents to wedge-wire screen baskets for wood pulping.

Represented incubators developing technology and assisted in establishing new companies.

One, of a team of attorneys representing successful plaintiff in appeal of patent infringement suit before the U.S. Court of Appeals for the Federal Circuit.

Practice Areas:

Patent, Trademark and Copyright Prosecution

Patent, Trademark and Copyright Litigation

Patent Reexamination and Reissue

Cybersquatting enforcement

Technology and IP Licensing, CRADAs

Asset Purchases

Opinions on IP infringement

IP Litigation Counseling

Trial Consultation and Analysis

IP Due Diligence Investigations

IP Mediation Services

Strategic IP counseling

Bar Admissions:

District of Columbia (active)

Maryland (inactive)

U.S. Patent and Trademark Office (registered attorney)

Court Admissions:

U.S. Supreme Court

U.S. Court of Appeals for the District of Columbia Circuit

U.S. Court of Appeals for the Federal Circuit

U.S. Court of Appeals for the Fourth Circuit

U.S. District Court for the District of Columbia

U.S. District Court for the District of Maryland


American University, Washington College of Law, J.D. 1990

Uniformed Services University of the Health Sciences, Ph.D. 1986 Microbiology

Iowa State University, B.S. 1978 major Zoology, minor Biochemistry