James A. Bertino

Mechanical/Electromechanical Patent Prosecution

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James Bertino is an experienced patent attorney who prioritizes quality and high value results for his clients.

James focuses his practice on domestic and foreign patent prosecution. He prepares, prosecutes, and advises on patents in several technical areas including the automotive, automation, and manufacturing industries. Specifically within the automotive industry, James has extensive experience in automotive technology relative to hybrid vehicles, powertrains, HVAC, safety systems, solar power, and plant automation. He counsels clients of all sizes, ranging from Fortune 500 Corporations to small start-ups, on a wide range of technologies.

“My goal is to create a quality product and to obtain the broadest patent protection for my clients.” – James Bertino

Because of James’s extensive engineering experience, James is technically proficient, being able to understand and put on paper what the invention is without having to rely solely on the inventor. He has extensive experience in novelty, validity, invalidity, state of the art, and clearance studies.

As an experienced advisor, James counsels his clients honestly on their patent portfolio. In his practice, James conducts extensive research on existing technology to determine the white space within a specific technology market to ensure a client’s concept falls within the determined white space to recommend whether the client should pursue patent protection. James is also highly skilled at formulating opinions on the validity or invalidity of a particular patent during litigation proceedings, determining the current state of the art in a specific technology market, and formulating opinions on whether a client has the freedom to operate in a particular technology market.

Prior to the legal profession, James worked for an automation manufacturer as a mechanical engineer. He was responsible for the mechanical design of powertrain assembly equipment. The design process included using computer aided design programs to generate the required mechanical drawings. James also worked for a large automotive OEM as a powertrain production supervisor. He was responsible for the daily operations of the department that produced the output shaft of the transmission. This included ensuring the efficiency and troubleshooting of the production machinery when a problem occurred.

James is a graduate from the University of Toledo Law School. He holds a bachelor’s degree from the University of Michigan in Mechanical Engineering. James is a registered patent attorney and a member of the bar for the State of Michigan and the Federal District Court of the Eastern District of Michigan.

In his free time, James likes to spend time on the water in his boat. He also enjoys the non-motorized time on the water and is an experienced oarsman. In 2015, he competed and won a master’s national championship in rowing.

Representative Matters

Represents a global Tier 1 automotive company on the prosecution and management of patent portfolios relating to hybrid technology such as hybrid powertrain technology and control systems for hybrid vehicles.

Represents a Tier 1 automotive supplier on the prosecution and management of patent portfolios relating to emission control for exhaust systems, HVAC systems, and display systems.

Represents an automation manufacturing client in the prosecution and management of much of their automation and inspection products.

Organizations and Affiliations

State Bar of Michigan

Education

J.D., University of Toledo

B.S.E, Mechanical Engineering, University of Michigan