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Fulbright & Jaworski L.L.P.


James W. Repass - Fulbright & Jaworski LLP
James W. Repass
Partner
D: +1 713 651 3623
Houston
Fulbright Tower
1301 McKinney
Suite 5100
Houston, TX 77010-3095
T: +1 713 651 5151
F: +1 713 651 5246
AREAS OF CONCENTRATION
  • Trademark Enforcement
  • Intellectual Property Due Diligence
  • Trade Secret Litigation
EXPERIENCE

Jim Repass, who joined Fulbright & Jaworski L.L.P. in 1986, is a partner in the firm's Houston office and is the co-head of the Firm's Intellectual Property and Technology Department. His multi-faceted practice focuses on intellectual property litigation and transactional matters.

Jim's 20+ years of experience includes:

  • Managing the IP aspects of numerous multi-million dollar transactions
    • Representation of buyer in $200 million acquisition in the manufacturing industry
    • Numerous representations of buyer/licensee in acquisitions in the semiconductor manufacturing industry
    • Representation of buyer in $1.5 billion acquisition in the transportation industry
    • Representation of buyer in $1.0 billion acquisition in the transportation industry
    • Representation of seller in a transaction (amount not disclosed) in the roofing supply industry
    • Representation of buyer in $45 million acquisition in the transportation industry (China)
    • Representation of buyer in $113 million acquisition in the manufacturing industry
    • Representation of buyer in $115 million acquisition in the manufacturing industry
    • Representation of buyer in a $70 million acquisition in the energy industry
    • Representation of semiconductor industry company in outsourcing manufacture of key component
    • Representation of non U.S. energy industry companies in their investment and joint development relationships with U.S. based technology development companies
    • Representation of buyer in multiple $50 million plus acquisitions in oil field service industry
  • Serving as lead counsel and co-counsel in numerous intellectual property lawsuits
    • Lead counsel in representation of defendant in patent infringement lawsuit (consumer products industry) (settled)
    • Lead counsel in representation of defendant in patent infringement lawsuit (specialty chemical industry)
    • Co-counsel in representation of defendant in patent infringement lawsuit (telecommunications industry)
    • Lead counsel in representation of defendant in patent infringement lawsuit (medical industry)
    • Lead counsel in representation of plaintiff in patent infringement lawsuit (medical industry) (judgment in favor of plaintiff)
    • Specialty patent counsel in representation of defendant in bankruptcy court patent infringement lawsuit (consumer products industry)
  • Assisting multiple large and medium size clients in managing large IP portfolios
  • Providing formal opinions concerning potential infringement, validity and enforceability of client and third party intellectual property, including studying potential issues raised by new product launches
  • Negotiating software development agreements, security agreements, supply agreements, research and development agreements,cost sharing agreements,escrow agreements, licensing agreements, secondment agreements and confidentiality agreements in various industries
  • Performing numerous due diligence analyses for clients in multiple industries
  • Advising clients regarding co-branding of trademarks
PROFESSIONAL ACTIVITIES AND MEMBERSHIPS
  • American Bar Association
  • American Intellectual Property Law Association
  • Houston Intellectual Property Law Association, former President
  • Texas Association of Defense Counsel - Intellectual Property Newsletter, former Editor
  • Licensing Executives Society
PROFESSIONAL HONORS
  • The Best Lawyers in America, in the specialty of Intellectual Property Law (2007)
  • "Texas Super Lawyer," Texas Monthly magazine (2008) 
PUBLICATIONS
  • Co-author with Lucas Osborn, "Patently Illegal:  What Taxpayers Should Know About Patented Tax Strategies;" Business Entities, Vol. 9, No. 2, pp. 22-29, March/April 2007
  • "Bar Code and RFID Technology Help Manage Documents," Texas Lawyer, Sept. 25, 2006, Vol. 22, No. 30, pp. 22-23
  • Co-author with Michael McCoy, "The Economic Espionage Act:  How Companies Can Use It On The Offense," The Intellectual Property Strategist, Vol. 7, No. 2, pp. 1-4, December, 2000
  • Co-author with Richard S. Zembek, "The Subject Matter of Patent Law: An Overview of Fundamentals and Potential Landmines," Institute on Intellectual Property Law for the Non-Intellectual Property Specialist, State Bar of Texas, March 21-22, 1997
  • "Trade Secrets Under the New Restatement of Unfair Competition," Houston Intellectual Property Law Association/University of Houston Fall Institute, 1996
  • "Economic Espionage Act;" American Bar Association, Section of Intellectual Property Law, 14th Annual Spring CLE Program, Patent, Trademark and Copyright Law: Litigation and Corporate Practice, April 12-13, 1999
  • "Texas Trade Secret Update," Houston Intellectual Property Law Association and University of Houston Fall Institute, 1998
SPEECHES
  • "NTP, Inc. v. Research in Motion, Ltd.," Fulbright & Jaworski L.L.P. Webinar, June 15, 2006
  • "The Subject Matter of Patent Law: An Overview of Fundamentals and Potential Landmines," Institute on Intellectual Property Law for the Non-Intellectual Property Specialist, State Bar of Texas, March 21-22, 1997
  • "Trade Secrets Under the New Restatement of Unfair Competition," Houston Intellectual Property Law Association/University of Houston Fall Institute, 1996
  • "Economic Espionage Act;" American Bar Association, Section of Intellectual Property Law, 14th Annual Spring CLE Program, Patent, Trademark and Copyright Law: Litigation and Corporate Practice, April 12-13, 1999
EDUCATIONAL BACKGROUND

1986 - J.D., honors, George Washington University Law School
1980 - B.S., summa cum laude, Chemical Engineering, The University of Tennessee

Jim was admitted to practice law in Texas in 1986 and is registered to practice before the United States Patent and Trademark Office.

INTERESTS

Jim is an outdoor enthusiast, and enjoys spending time with his family traveling.

CIVIC INVOLVEMENT
  • Annunciation Orthodox School, Board of Trustees






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"In-house litigator training and similar programs, along with challenging opportunities, make this a very special place where younger lawyers can develop their careers."