Rose James Email and Phone Number

Responsible for protecting and defending Expedia intellectual property rights globally. Serve as primary advisor to the Expedia businesses on all IP matters and partner closely with others in the legal department to provide end-to-end legal support for technology, marketing, and commercial initiatives.

Served in a newly established position in the dual role of IP and Commercial Transactions. Serve as the lead counsel for Cummins Electronics and Fuel System and is a member of its leadership team. Also, served as a member of the IP legal team handing all facets of intellectual property and complex commercial transactions, including advising on patent and trademark prosecution, enforcement and licensing, copyright licensing, IP settlements, branding, software licensing, technology development and evaluation, and providing guidance on technical publication, and general guidance on IP considerations within all stages of the business cycle.

Establish an intellectual property legal practice for the Cybersecurity and Infrastructure Security Agency (CISA) and serve as the intellectual property subject matter expert for and on behalf of CISA. Coordinate with the Office of the General Counsel's Intellectual Property Group to ensure coordinated approach on intellectual property policies, procedures and practices within the Department of Homeland Security. Develop intellectual property guidance. Evaluate government contracts to determine government rights in technology developed for or sponsored by CISA. Advise on software and open source licensing matters. Establish an invention review process and evaluation of CISA employee inventions for patentability. Represent CISA in all matters before the United States Patent and Trademark Office, including the Trademark and Patent Trial and Appeal Boards. Liaise with the Department of Justice on intellectual property litigation in which CISA employee is government witness or CISA has equities. Prepare and conduct intellectual property training for attorney managers and CISA officials.

At DHS, I was given the opportunity to establish a new legal practice within the Office of General Counsel specializing in intellectual property, Internet, and technology law. In setting up the practice, I partnered with the Department of Energy and Federal Aviation Administration to obtain supplemental patent prosecution services; collaborated in setting up an Invention Evaluation Board to review inventions in which the Department of Homeland Security had the option to pursue filing patent applications with the United States Patent and Trademark Office; set up and matured a trademark practice allowing DHS to protect the names and visual identities associated with external facing programs; drafted and obtained consensus on DHS intellectual property policy; and implemented trademark and copyright policy and guidelines department-wide. I work in a fast-paced, high volume, high pressure environment in which my role is often the last legal hurdle a Program Manager must take before launching a new program, acquiring important software, partnering with a private organization, or a number of other activities that are undertaken by the DHS components and offices. Here are just a few examples of my responsibilities:• Structure transactions of all sizes, from no-cost agreements to $1.5B technology-driven deals and maintain involvement in full lifecycle of projects they represented. Parties included U.S. federal, state, and local governments; foreign governments, and private-sector entities that encompassed nonprofit and commercial organizations.• Negotiate intellectual property provisions of international agreements with European Union, France, Spain, New Zealand, Singapore, Israel, and Canada; and all trademark pre-litigation disputes, and trademark issues with Fortune 500, mid-size, and small businesses. • Create and conduct intellectual property rights training for senior leadership, program managers, procurement officials, other attorneys, and support staffs.

Because of my strong writing skills and work ethic, I was selected by the General Counsel of DHS to conduct research and provide a recommendation on two significant legal questions: one related to a Customs and Border Protection administrative decision that overturned a three-decade precedent on the “first sale rule” for assessment of tariffs. The change of practice by the Customs and Border Protection led to an uprising in the import/export industry and high scrutiny from Congress; the second related to revisions to the Foreign Intelligence Surveillance Act and the procedures for permitting the United States Government to conduct surveillance for prevention of terrorism purposes. There was significant litigation against the United States pertaining to the law and high public interest in the authorities granted to the United States Government. My assignment prepared the recommendation memorandum provided to the Secretary of Homeland Security. As a legislative affairs attorney, I practiced in the following areas of law: intellectual property, homeland security, transportation safety and security, maritime safety and security, customs tariff, international trade, and immigration. Because of the high degree of proficiency I exhibited in legislative affairs issues, I was chosen as lead counsel for legislation that included Security and Accountability for Every Port (SAFE Port) Act of 2006.

At this and another Verizon subsidiary, I assisted and supported the Office of the General Counsel, which comprised of 2 attorneys at the time. I practiced intellectual property, telecommunications, Internet, and technology law. I negotiated, drafted and reviewed the Company’s contracts including, but not limited to, the following subject matters: Alliance, affiliate, access, consulting, content acquisition, encoding, patent licensing, master data processing, marketing, purchase, sales agency, general services, software licensing services, right of entry, leases, statements of work, and project management agreements. Due to the merger between the former Bell Atlantic Corporation and GTE Communications Corporation, which necessitated restructuring to avoid business duplication, I was involved in winding down activities in preparation of full divestiture resulting from the merger. Such activities included, but were not limited to, conducting due diligence, accessing liability and compliance with termination provisions of the Company’s major contracts, and assisting the General Counsel with litigation that had resulted from contract terminations and disposition of the Company’s major assets. As one of the few remaining employees of the divested company, I investigated and resolved customer complaints made to Verizon Customer Relations, the Better Business Bureau and state attorney general offices; and served as legal point of contact for communication with all vendors.

The Office of the Vice President and General Counsel was looking for someone to manage the University and Medical Center’s Year 2000 compliance. It was a daunting undertaking it its breath and scope, but I successfully created documentation books cataloging the efforts, progress, and success of the University and Medical Center in becoming Year 2000 Ready. I supervised and delegated duties to assistants to accomplish this. As a result of the precision and skill with which I attacked the Year 2000 compliant project, I was assigned some other significant undertakings, including managing the due diligence for the corporate restructuring of an unincorporated University entity; identifying, retrieving, and reviewing existing vendor contracts, along with regulatory certificates and licenses required to operate two health care facilities; and drafting uniform contracting protocol guidelines accessible to University employees online. In a show of supreme confidence in my abilities, I was included on a team with senior attorneys in which we drafted, filed, and obtained community approval of off-site campus plan and drafted a settlement agreement for $4M fee dispute.

In this position, I along with a group of contract attorneys assisted Skadden attorneys with two separate Department of Justice (DOJ) Second Requests regarding merger of software companies and assisted Mobile attorneys with response to Federal Trade Commission (FTC) Second Request regarding Mobil/Exxon merger. I also reviewed and analyzed voluminous number of documents and categorized documents as privileged, responsive to DOJ or FTC specifications, or non-responsive; indexed, organized, and produced documents to DOJ and FTC.

This was my first position after graduating from law school with an interest and desire to practice intellectual property law. Instead, there was a need in the Project Finance satellite office of the firm and I welcomed the opportunity to practice law. My first assignment was about the deregulation of the electric power industry and I wrote informational memoranda for partners about that subject. I also drafted corporate restructuring contracts, which allowed power marketers to exercise FERC newly granted rights to compete in the electric power industry. Showing acumen for the subject, coupled with limited staff at the satellite office, my role in the projects increased exponentially. I was given responsibility for drafting contracts and related documentation in conformity with the firm’s role as Bond Counsel for the Washington Airports Public Authority in the sale of public authority bonds for improvement and repair of the Washington airports; drafting contracts and related documents required as counsel for a private not-for-profit corporation acquiring a retirement community; drafting financing documents for waste-to-energy facilities; compiling closing transcripts; conducting extensive statutory, regulatory, and case law research; and drafting other documents such as audit response letters, bond counsel proposals, merger and acquisition contracts, and charter documents for several corporate entities.