Who we are

Jaimes Sher is the founder of IP EXCELLENCE, and has more than 30 years of IP experience in creating, leading and managing Intellectual Property and IP departments for global Fortune 500 companies

 
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JAIMES SHER HAS EXTENSIVE KNOWLEDGE AND GLOBAL PRACTICAL IP EXPERIENCE

specifically providing senior executives and lawyers sophisticated and differentiated counsel for delivering IP value.

 

He has developed and implemented tailored intellectual property strategies specifically designed for leveraging competitive advantages in driving global business objectives and solutions.

Jaimes has significant experience leading and managing award winning IP departments and driving a globally efficient and cost justifiable function for creating IP value, enhancing IP protections, and minimizing competitive risks.

He has been a successful champion working with R&D and CTO’s implementing technology plans with innovative and balanced IP positions, offensive and defensive, thoughtfully considering the risks, competitive landscapes and budgets. Jaimes has also provided functional IP Excellence to law departments supporting global initiatives for providing high quality and efficient legal services. Furthermore, he has experience working with Board’s, CEO’s, GC’s and other business executives delivering innovative business/legal solutions generating high-value, impactful results.

Jaimes has global experience in all facets of IP law practice and management including litigation, mergers, acquisitions, divestitures, licensing, competitive intelligence, negotiation, JV complexities, database design and implementation, risk and opinion analysis, tax structures, contracts – confidentiality, joint development, university, employee – non-competes, invention compensation, software, and government, IP budget management, patent - drafting, filing, procurement, challenges and enforcement, trade secret identification and protection programs, trademark portfolio management - branding, filing, procurement, challenges and enforcement, copyright matters, and IP training.

While with ExxonMobil, Cabot, Chemtura, Celanese and Ulterra, Jaimes gained First-Hand Experience:

 
Experience Leading people and Managing IP law departments.
  • Lead and managed an award-winning diverse IP department of paralegals, patent agents, and attorneys from around the world.
  • Created and managed two IP law departments from scratch including database implementation, all IP processes, and retained lawyers, agents, paralegals, and legal assistants. Managed multiple IP database conversion projects world-wide from upgrades to new systems.
  • Managed and worked closely with law firms around the world with strong relationships and interactions for handling any type of IP matter in most all major geographies.
 
Experience with IP litigations and adversarial proceedings.
  • Significant involvement with global IP patent litigation and/or contentious actions in Australia, Argentina, Belgium, Brazil, Canada, China, France, Germany, India, Italy, Japan, Korea, Mexico, Netherlands, Poland, United Kingdom, Taiwan, Singapore and U.S (including International Trade Commission (ITC) and Inter Partes Review (IPR) proceedings); managing or coordinating with lawyers, agents, solicitors and barristers in all countries, and in some ensuring consistent strategies across multiple countries and in different actions; and in others involved with related actions involving contract disputes, criminal investigations, Lanham Act violations, and antitrust claims.
  • IP related contentious matters also involved actions brought by inventors under German compensation laws, misappropriation of trade secret actions and enforcement of non-compete agreements.
  • Patent application drafted, filed and prosecuted involved in major multi-country litigation valued at well over $1B resulting in settlement and formation of a licensing joint venture; prepared freedom-to-operate opinions, one of which resulted in being deposed and testifying in Federal Court in a patent infringement action; and involved in a patent litigation action that resulted in creating new law.
 
Experience developing and managing strategic, global Intellectual Property portfolios.
  • Drafted, filed and prosecuted 100's of patent applications, and managed and responsible for extensive portfolios of more than 1000 patent families with greater than 7000 cases.
  • Managed and handled significant trademark portfolio for consumer product company, developed trademark usage guides, trained marketing and communication departments, and handled grey market goods investigations and actions.
  • Worked closely with communications and marketing on broadcast, music and printed-material copyright issues.
 
Experience leading successful licensing or acquisition of Intellectual Property.
  • Managed, handled or integrally involved with acquisitions and divestitures involving IP from less than $20M to greater than $50B, joint venture IP management and licensing, IP portfolio-only purchase and sale, due diligence, and setting up IP tax structures.
 

Experience negotiating and drafting IP related agreements.

  • Handled non-disclosure/confidentiality and joint development agreements, purchasing or selling IP contracts, IP licenses - patent and trademarks, transactions with universities and the government, employee agreements - IP ownership, compensation, non-competes and non-solicit, and intra-company licenses for purposes of transfer pricing or tax restructuring.

Jaimes has degrees in biology and chemistry and worked with technologies in many industries including oil and gas, chemicals, plastics, alternative energy, food, electronics, consumer products, medical devices, biotechnology and pharmaceuticals. He has a law degree and Masters in IP law, and is an inventor on several patents. He is an avid triathlete and runner having completed several Ironman competitions and marathons.