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James McGuire

James E. McGuire, Esq.

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Case Manager
Roxanne Zinkowitz
T: 617-228-9124
F: 617-228-0222
One Beacon Street , Suite 2210 , Boston , MA 02108-3106
A former senior partner at a large law firm with substantial litigation and dispute resolution experience in resolving patent licensing disputes, Mr. McGuire also has extensive experience as a mediator and arbitrator of intellectual property claims, including patent infringement, patent licensing, ownership of IP, scope and construction of non-compete and field-of-use clauses, copyright, and trademark matters.

Mr. McGuire is a frequent lecturer on Intellectual Property and, as such, has acted as a panel presenter for Boston Bar Association’s Intellectual Property Section. Additionally, he has presented and trained Moscow Commercial Court judges on mediation and transnational IP patent licensing disputes.

Representative Matters

  • Patents
    • Licensed drug arbitration. Arbitrated licensing dispute involving FDA approved drug and patent license agreement. Resolution required construction of scope of patent claims and terms of license agreement.
    • Medical device patent infringement arbitration. Panel chair of member panel arbitration involving patent claims construction, alleged infringement, and construction and application of patent licensing agreement.
    • Heart rate monitor patent. Mediated dispute between inventor and major manufacturer of health club and sports equipment concerning patents on devices for monitoring heart rate during exercise.
    • Healthcare device patent. Mediated dispute between inventor of FDA-approved medical device and investors in closely-held corporation where ownership of IP was key to employment and shareholder claims.
    • MRI patent. Mediated dispute involving functional MRI patents between doctor/inventor and development company licensed to use some, but not all, of MRI patents and patent applications. Issues included scope of use, royalty agreements, rights to use future patents, and consulting for product development and improvements.
    • Arthroscopic surgery medical devices and methods. As settlement counsel for doctor/inventor, negotiated patent licenses and royalty agreements involving arthroscopic ACL surgery with major U.S. medical device manufacturers.
    • Sportswear patent. Mediated business dispute involving break-up of closely held corporation where key asset was patent for sportswear product with disputed claims of ownership.
  • Software
    • Web software. Mediated dispute between software developer/owner and major international software manufacturer.
    • Robotic software. Mediated IP and shareholder dispute involving software for robotics in start-up company.
    • VC funding of software development. Mediated dot.com company dispute with international venture capital funding. Issues included funding obligations and milestones; ownership of customer accounts, customer lists, accounts receivable, and other intangible assets.
  • Trademark, copyright, and trade secrets
    • Music copyright infringement. Mediated dispute between international rock band and performing artist/songwriter concerning alleged copyright infringement of songs.
    • International trade name licensing. Mediated international trade name licensing dispute involving scope of use, broker/finder fees, and accounting claims.
    • International IP. Mediated trade secret/development dispute involving early adapters of digital photography technologies and web-hosting environments.
    • Copyrights/trademark/trade dress. Mediated apparel industry dispute involving product branding, validity of copyrights, and related IP matters.
  • Recognized by Best Lawyers as one of the 2016 Best Lawyers in America for ADR
  • Best Lawyers in America: Arbitration/Mediation (2006-2015)
  • Best Lawyers, New England, 2015
  • International Who's Who Legal: Mediation (2014)
  • Dispute Resolution Affiliations: JAMS (2004-present); American Arbitration Association, arbitration panel (1991-2004), mediation panel (1991-2006); International Institute for Conflict Prevention and Resolution ("CPR") mediation panel (1990-2010); World Intellectual Property Organization, WIPO arbitration and mediation general panel (2006-present); HUM, Croatian Mediation Association, mediation panel (2012-present)
  • International ADR Training/Lectures
    • South Korea, International IP ADR Center, IP Mediation, Seoul, South Korea (2014)
    • Trainer, MCLE, Commercial Mediation (2005-2012)
    • Croatia Mediation Association, Mediation Advocacy Workshop, Zagreb, Croatia (2012)
    • Croatia Mediation Association, Risk Analysis in Mediation, Zagreb, Croatia (2011)
    • University of Zagreb Law School, Global Mediation, Zagreb, Croatia (2011)
    • China, Xiangtan University School of Law, Mediation Training and Train-the-Trainers Course, Changsha, Hunan Province, PRC (2011)
    • Canada, ADR Institute of Canada, Global Mediation, Keynote speaker, Calgary (2010)
    • Netherlands, Mediation: Pro-Active Model Workshop; Master Class on Mediation, The Hague, Netherlands (2010) (workshop materials published as booklet)
    • International Trademark Association, Mediation Training Course, Boston (2010)
    • China, Northwest University of Politics and Law, Xi'an Province, PRC, Mediation: Theory and Practice, (2009 (materials on mediation published as chapter in book with Professor Zhao, NWUPL, 2010))
    • China, China Academy of Social Science, History and Practice of U.S. Mediation, Beijing, (paper published by CASS) (2009)
    • China, Beijing Arbitration Commission, Court-Connected Mediation, Beijing (paper published by Judicial Reform Office, Supreme People's Court) (2009)
    • China, China Law Society, Symposium on Mediation, Changchun, Jilin Province, PRC (2009)
    • Canada, Fraser Milner Casgrains, LLP, Advanced Mediation Advocacy, Course for Counsel; Conflict Coaching Clinic, Toronto, Montreal, Calgary, Edmonton (2006, 2007)
    • Jordan, IP Mediation, Jordan Intellectual Property Organization/World Intellectual Property Organization, Joint Program (2006)
    • Jordan, Mediation and Arbitration Training for Insurance Commission of Jordan, Amman, Jordon, (two-week program sponsored by ABA 2006)
    • Norway, Mediation Training Seminar, (Teaching assistant for Harvard PON mediation course, 2005)
    • Russia, Commercial Mediation Training, Rostov-on-Don, Russia (2005)
    • Russia, Mediation of Transnational IP Patent Licensing Disputes, Moscow Commercial Court, Moscow (2004)
    • Boston University School of Law, Mediation: Theory & Practice Seminar (Lecturer, 2003-2007; Guest Lecturer, 2008-2014)
    • Harvard Law School, Program on Negotiation, Mediation Seminar, (Lecturer, 1989-2011)
    • Northeastern University School of Law; Mediation in the Public Interest (Adjunct Professor, 1999-2002)
    • Johns Mansville Asbestos Mediation Program, Mediation Training, (Faculty, 1990)
  • Publications
    • Numerous articles in ABA Dispute Resolution Magazine and other periodicals on various aspects of mediation process and mediation advocacy
    • Mediation: A Practical Guide (2014)
    • China, Building a Common Language, (English-Mandarin book on ADR and mediation process) published by China Legal Press (2011)
  • Mediator and Arbitrator, JAMS, 2004-present
  • Chair, ADR Practice Group, Brown Rudnick LLP, 1989-2004 (Associate and Partner, Trial Department, 1982-1989)
  • Associate, Litigation Department, Goodwin, Proctor & Hoar, 1975-1982
  • Law Clerk for Hon. Joseph L. Tauro, U.S. District Court, District of Massachusetts, 1974-1975
  • J.D., Boston University School of Law, 1974 (Editor-in-Chief, Law Review, 1973-1974)
  • B.A., Harvard College, 1968

Counsel Comments

    "Informed decision-makers and able counsel working with an experienced mediator are the key ingredients to a successful mediation."
    - Jim McGuire

    Recognized as a Best Lawyer, Alternative Dispute Resolution Category, Best Lawyers in America, 2006-2015

    Recognized in International Who's Who Legal for Mediation, 2014

    Recognized as a Massachusetts Super Lawyer, Alternative Dispute Resolution Category, Law & Politics Magazine since 2005

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