James G. Gatto

Firm: Sheppard Mullin
Location: Washington - DC

  • 2099 Pennsylvania Avenue
    N.W. Suite 100, Washington, DC
    20006-6801
  • Tel : 1.202.747.1900
  • Fax : 1.202.747.1901
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For more than 30 years he has been a thought leader and has provided strategic advice on all aspects of intellectual property and technology law, especially ones driven by new business models and/or disruptive technologies. His practice focuses on blockchain (including blockchain games, cryptocurrency/NFTs); interactive entertainment (metaverses, virtual worlds, games, AR, VR, fantasy sports, esports); digital art, AI and online gambling. He advises clients on IP strategies, development and publishing agreements, licensing and technology transaction agreements and tech regulatory issues (securities, gambling, AML). Mr. Gatto has been involved with blockchain since 2012 and has been recognized as a thought leader by leading organizations including Best Lawyers in America 2021-2022; Cryptocurrency, Blockchain and Fintech Trailblazer, The National Law Journal, 2018; and Thought Leader on Blockchain & Cryptocurrencies, National Law Review, 2018.

Jim’s practice is national and international and encompasses a full range of IP and technology issues, including:

  • patent, trademark, copyright and trade secret litigation;
  • counseling and technology transactions;
  • developing and implementing IP strategies to protect and to monetize IP assets;
  • creating and implementing corporate IP programs;
  • conducting IP audits;
  • conducting complex patent prosecution, including patent appeals, interferences, inter partes review (IPRs), reissues and protests;
  • handling patent enforcement issues, including licensing and litigation;
  • negotiating and drafting technology agreements;
  • conducting IP due diligence in and negotiating IP aspects of mergers, acquisitions and financings;
  • rendering opinions concerning the infringement, validity and enforceability of patents;
  • handling trademark prosecution, domain name, copyright and trade secret matters;
  • handling IP aspects of employment issues;
  • advising clients on legal issues associated with open source software, including open source patent issues, licensing, open source compatibility issues, indemnity issues and developing and implementing corporate policies on use of open source software;
  • advising clients on the legality of cutting-edge internet business methods and technology; and
  • advising clients on computer law issues such as computer fraud and abuse and SPAM-related issues.

Education

  • J.D., Georgetown University Law Center, 1988
  • B.E., Electrical Engineering (with Physics minor), Manhattan College, 1984

Admissions

  • Commonwealth of Virginia
  • District of Columbia
  • U.S. Court of Appeals for the Federal Circuit
  • U.S. Court of Federal Claims
  • U.S. District Court for the District of Columbia
  • U.S. Patent and Trademark Office

    • Sheppard Mullin

    Intellectual property rights may be your most valuable asset in today’s market. Sheppard Mullin is a leader in the protection of those rights, and we are well positioned to help companies protect their intellectual property rights and exploit their commercial potential. In 2015, we were one of the few firms recognized by Law360 as “Intellectual Property Practice Group of The Year”.

    We cover in depth all laws governing patents, trademarks, copyrights, trade secrets, false advertising, unfair competition, counterfeiting, grey marketing, and all matters involving intellectual property. We routinely address practical concerns related to the Internet, intranets, e-mail and document and data retention policies, as well as offer cutting edge advice in important related areas such as antitrust, unfair competition, counterfeiting, grey marketing and product diversion. Sheppard Mullin represents clients ranging from Fortune 500 corporations to deserving start-ups and individuals across a wide spectrum of industries.

    Sheppard Mullin’s attorneys assist clients to secure and enforce patents, trademarks and copyrights, both domestically and internationally. We also monitor and enforce our clients intellectual property rights on the Internet. Our attorneys are experienced in technology transfers, including assignments, licensing and joint ventures. We also assist our clients to protect proprietary information to avoid loss through employee departures, industrial espionage or other means, as well as create compliance and employee training programs. We have proven expertise in representing clients in trials and appeals in the federal and state courts, in arbitrations and in adversarial proceedings before the U.S. Patent and Trademark Office, the International Trade Commission, the Federal Trade Commission and other tribunals, as well as in industry investigations such as those before the National Advertising Division of the Council of Better Business Bureaus, Inc.