James Toupin is the former General Counsel of the US Patent and Trademark Office, a position he held for nine years, and former Deputy General Counsel of the US International Trade Commission, where he worked for fourteen years. Before working at those agencies, he was in private practice, with concentrations in intellectual property law (including patents, trademarks, copyright and unfair competition) and administrative agency litigation (including EPA, FTC, and OSHA). At the USPTO, he was the chief legal officer, responsible for the Office of the Solicitor, Office of General Law and Office of Enrollment and Discipline, as well as for management oversight of the Board of Patent Appeals and interferences and the Trademark Trial and Appeal Board. Among other duties, he was responsible for deciding whether to approve BPAI or TTAB suggestions that their decisions be made precedential. At the USITC, he supervised all litigation on behalf of the agency, including in the Court of Appeals for the Federal Circuit, the Court of International Trade, district courts and international tribunals.
He has represented parties in a wide variety of fora, including in private arbitrations, US district courts and the CIT, NAFTA and WTO panels and appellate tribunals, boards of contract appeals, the Merit System Protection Board, regional circuits and the Court of Appeals for the Federal Circuit, and the Supreme Court. He has experience in many of the subject areas that come before the Federal Circuit. He not only has specialized expertise in patent, trademark and international trade law, he has also provided advice and representation in such areas as government contracts, government employment, and appropriation law. Currently a master member of the Giles Rich Inn of Court, he is a past member of the Court of International Trade's Rules Advisory Committee as well as the American Bar Association subcommittee on international trade.
Beyond serving as a volunteer mediator for the Court of Appeals for the Federal Circuit, he is on the roster of neutrals of the World Intellectual Property Organization and on the roster of panelists for disputes under Chapter 19 of the North American Free Trade Agreement. His formal training in alternative dispute resolution includes the intensive mediation training course from the Center for Understanding in Mediation and WIPO arbitration workshop. Widely published on issues of intellectual property and international trade law, he is currently working under contract with Oxford University Press on a book for general practitioners on issues that arise in patent litigation.
Court of Appeals