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James P. Muraff
Partner
jmuraff@ngelaw.com
Phone: (312) 269-8034
Fax: (312) 269-1747

James P. Muraff is a member of Neal Gerber Eisenberg’s Intellectual Property Practice Group. His practice includes all aspects of intellectual property, including domestic and foreign patents, trademarks, copyrights, trade secrets and unfair competition, including counseling, investigations, transactions, prosecution and litigation, with a primary focus in the computer software, computer hardware, electronics and Internet technologies and business methods.

Jim is regularly involved with software and Internet clients for transactional, licensing and general intellectual property law counseling. Within this primary focus, James practice includes significant patent, trademark and copyright litigation experience. He has represented clients in relation to various technologies in patent, trademark, unfair competition, copyright and trade secret cases in the federal courts. He has been involved with all of the related aspects of these cases, such as discovery and discovery motions, as well as the preparation of numerous motions for summary judgment, motions to dismiss and trial preparation. Several of these cases have included foreign parties and international issues.

Jim is a registered patent attorney, and his practice includes significant patent counseling and patent application preparation experience. He practices before the U.S. Patent and Trademark Office on a regular basis, and has significant experience in the patent application preparation and prosecution of computer software, methods of doing business, e-commerce, Internet, computer hardware, electrical and mechanical patent applications. In addition, he has experience in reexamination and reissue in several of these technologies.

Jim has industry experience as a software engineer and as a systems analyst, including software programming and support for micro controllers, as well as personal, mini and mainframe computers. His industry experience includes the areas of at least building controls and computer networks.

Jim is an adjunct faculty member of the John Marshall Law School, where he teaches substantive patent law and has taught an introductory intellectual property law class. He has also lectured at the University of Illinois at Urbana-Champaign, Illinois State Bar Association seminars, Law Seminars International seminars and other seminars on intellectual property matters.

Jim has served on the board of managers and various committees of the Intellectual Property Law Association of Chicago (IPLAC), and is the vice president of the IPLAC Educational Foundation. He also judges moot court competitions at the John Marshall Law School and at the IIT Chicago-Kent College of Law. He further has served on the board of advisors for the Northwestern University Law School Journal of Technology and Intellectual Property. He is a judge for the Modern Marvels Invent Now Challenge, sponsored by the History Channel and Invent Now, Inc., a subsidiary of the National Inventors Hall of Fame Foundation.

Jim regularly writes articles on intellectual property law topics, which are published in various legal and industry publications. He is a contributing author of the 2007, 2008 and 2009 editions of Claim Construction in the Federal Circuit, produced by the Litigation Committee of the Intellectual Property Law Association of Chicago. He is also quoted from time to time in the press on intellectual property law matters.

Jim received his J.D. from The John Marshall Law School in 1994 and his B.S. in Computer Engineering from the University of Illinois at Urbana-Champaign in 1990. While in law school, he was a staff editor for The John Marshall Law Review. He is admitted to practice before the Supreme Court of the State of Illinois, U.S. Court of Appeals for the Federal Circuit, U.S. District Court for the Northern District of Illinois and U.S. District Court for the Central District of Illinois. He is also licensed to practice as a patent attorney before the U.S. Patent and Trademark Office.

Bar Admissions
  • Illinois, 1994
  • U.S. Patent and Trademark Office, 1995
Courts
  • Supreme Court of Illinois
  • U.S. Court of Appeals for the Federal Circuit
  • U.S. District Court for the Northern District of Illinois
  • U.S. District Court for the Central District of Illinois
Education
  • University of Illinois (B.S., 1990)
  • John Marshall Law School, The (Chicago) (J.D., 1994)

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PRACTICE AREAS
Intellectual Property


EVENTS
The New Value Standard? - Reasonable Royalty Patent Damages Under a Microscope

The Patent Cooperation Treaty in 2007

U.S. Patent Law and Related Biotech Patent

Mediation of Patent Disputes and the New Federal Circuit Mediation Program

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PUBLICATIONS
Supreme Court Reaffirms that Business Methods Are Still Patentable and Not Limited by the Federal Circuit’s “Machine or Transformation” Test

False Patent Marking Penalties Now Easier To Avoid

Federal Circuit Clarifies Potential Penalties for False Patent Marking

U.S. Supreme Court to Review Patentability of Business Methods - In re Bilski’s “Machine or Transformation” Test

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