ATTORNEYS

 
 

Jim Markwith

jim@markwithlaw.com
206-714-6003
LinkedIn 

Jim is a transactions lawyer with more than 25 years of experience counseling clients in Silicon Valley and across the US.  Previously, Jim was Senior Vice President and Chief IP Counsel for Allscripts Healthcare, and Senior Counsel on Microsoft’s Intellectual Property and Licensing team, where he supported the Server and Tools product development team, Standards Strategy Group, and the Venture Integration (M&A) Team.  Jim was Microsoft’s first official Open Source Counsel and was Chief Counsel for Microsoft’s CodePlex Open Source Foundation. Prior to Microsoft he was Corporate Counsel, World-wide Products and Marketing for Adobe Systems. 

Before his legal career Jim served as a Naval Officer and U.S. Navy Pilot, and was appointed to the United States Naval Academy, at Annapolis Maryland, as an Instructor of Economics. 

Mr. Markwith is a frequent speaker on the topics of Intellectual Property, Open Source Software, protecting and monetizing data rights, healthcare law, standards and interoperability.  For more information on his published articles, book chapters and speaking events, please see the following Publications and Speaking Events.

Education

  • Santa Clara University School of Law (J.D., 1997)

  • Sorrell College of Business (MBA, 1994)

  • California State University at Long Beach (B.S.B.A., Finance, 1986)

 Bar Admissions 

  • Washington State

  • District of Columbia

  • California [Inactive]

Publications and Speaking Events

Lectures & Public Speaking

  • 01/12/2022, Webinar, sponsored by Above the Law & FOSSA: How to Ensure Open Source Risks Won’t Scuttle Your Deal. Critical guidance in a record-breaking M&A market. View the webinar: https://abovethelaw.com/2022/01/how-to-ensure-open-source-risks-wont-scuttle-your-deal/

  • 06/03/2019, Lansing, MI. Legal Summit at Connecting Michigan for Health Conference. Speaker and Panelist on the topic of: Trusted Exchange Framework and Common Agreement (TEFCA) and the release of two complementary rules by the Office of the National Coordinator for Heath Information Technology (ONC) and Center for Medicare & Medicaid Services (CMS) and how these three collaborative efforts are moving the country towards the future of interoperability. See: https://connectingmichigan.net/legal-summit-information-page/

  • 04/02/2019, Atlanta, GA. The International Symposium on Medical Robotics (ISMR) at Georgia Tech. Speaker, ISMR Workshop titled: Convergence of IP, Tech Transfer, and Translation, for Medical Robotics Research. The workshop explored patenting, commercialization procedures and hurdles faced, particularly in making medical robotics accessible to hospitals across the world. See: https://sites.google.com/view/ismr-workshop-ip-tech-transfer

  • 06/28/2018, San Francisco, CA. Synopsis & Black Duck Tech Diligence & Open Source Summit. Topic: Best practices related to Open Source Software compliance and the management of open source security, privacy regulation compliance, and other risks during M&A transactions. How will you ensure compliance with data privacy regulations like HIPAA, TEFCA and GDPR? See: https://events.bizzabo.com/flightwest18/page/1334756/speakers

  • 06/05/2018, Lansing, MI. The Michigan Health Information Network (MiHIN) Shared Services Legal Summit. Topics: Healthcare Privacy and Electronic Consent. Other topics included: Trusted Exchange Framework and Common Agreement, Bioethics in the realm of Electronic Information Sharing, common conundrums in Healthcare Privacy and Consent, and various other areas.  

  • 10/22/2017, Santa Clara, CA. Santa Clara University School of Law, Entrepreneurs’ Law Clinic.  Lecture on Open Source Software Risks, Use in the Cloud, Compliance, and Risk Mitigation.  

  • 04/18/2017, Los Angeles, CA. and via World-wide Webcast.   Black Duck Software Webinar: Outsourcing; Protect your IP and Reduce Open Source Risks.  How organizations can outsource to meet their development needs, while mitigating IP and open source security risks. Includes important strategies to protect IP before giving contractors access to IP. 

  • 04/11/2017, Santa Clara, CA. Entrepreneurs’ Law Clinic. Open Source Essentials for Legal Counsels. Santa Clara University School of Law.    

  • 01/22/2017, Santa Clara, CA. California Program for Entrepreneurship (CAPE), sponsored by the Leavey School of Business, Santa Clara University: Contracting and the Internet. Important Early Stage Agreements for Startups.   

  • 11/11/2016, Santa Barbara, CA.  California Bar, Intellectual Property Section’s 41st Annual IP Institute: Your Guide to Penguin Super Heroes—Open Source Software Advantages, Compliance, and Enforcement.

  • 10/18, 2016, New York and via World-wide Webcast. Practicing Law Institute (PLI) Webcast on Open Source Software Use in Medical Devices: Essentials for the In-House and Outside Counsel.

  • 04/05/2016, Santa Clara, CA.  Santa Clara University School of Law, Entrepreneurs’ Law Clinic. The Anatomy of an Open Source Audit.  http://law.scu.edu/elc/

  • 02/20/2016, Santa Clara, CA.  In-House Counsel Institute, Santa Clara University School of Law.  Legal Basics of Data Use Agreements, Open Source Software and Litigation Trends. 
    http://law.scu.edu/inhousecounsel/

  • 11/13/2015, New York, NY.  Practicing law Institute (PLI) Health Care Law Institute 2015: Emerging Challenges and Trends in Reimbursement, Enforcement and Other Hot Topics: Current Legal Developments in eHealth and mHealth: Telemedicine/ Telehealth, Electronic Health Records, Information Technology and Integrity. 

  • 10/13/2015, San Jose, CA. I ♥ APIs 2015 Conference: API-ifying IP for Competitive Advantage, and how to avoid losing your valuable IP rights related to data and intellectual property (IP) when entering into transactions involving APIs in emerging cloud-computing environments. 

  • 07/02/2015, Santa Clara, CA. Santa Clara University School of law. Santa Clara Law School’s Entrepreneurs’ Law Clinic Program: IP Licensing, Contracts Related to Data Rights & HIPAA Compliance.

  • 11/03/2014, Santa Clara, CA. Santa Clara University School of law. Santa Clara Law School’s Entrepreneurs’ Law Clinic Program: Protecting IP and Licensing for Success: Commercial IT Product Development in the Cloud.

  • 10/07/2014, Paris, France. ITech Conference: Data as a Source of Value Creation. 

  • 09/12/2014, Chicago, IL, 1871: Chicago’s Entrepreneurial Hub for Digital Startups.  Presentation before Teknojumpp Acceleration Program, initiated by ODTU Teknokent, Turkey’s leading technology park management organization with more than 300 startups in house. Topic: Essentials for Protecting a Startup's IP from Ideation to Commercialization.

  • 06/07/2014, Chicago, IL. Chicago Health Care Dinners. Protecting Your IP:
    HCIT Product Development & Cloud Computing.

  • 03/26/2014, Newport Beach, CA. Orange County Bar Association, Business and Corporate Section CLE Seminar.  Legal Risks: Open Source Software and HIPAA in the Cloud.   

  • 05/03/2013, Scottsdale, AZ. ITech Conference. Intellectual Property and IT: Open Source Software Risks in the Cloud. 

  • 04/07/2011, San Francisco, CA. Linux Foundation Collaboration Summit. Analysis of the state of license compliance today, compliance challenges, review tools and techniques currently available to help with compliance.

  • 02/04/2011, Seattle, WA. Angel Capital Association Northwest Regional Meeting. IP Issues for Exits. Legal and IP Issues – Preparing for Acquisitions. 

  • 09/20/2010, San Francisco, CA. American Conference Institute’s Structuring and Negotiating Effective SaaS, PaaS and IaaS Contracts for Cloud Computing Conference. Complying with Open Source Licenses & Understanding the Impact of their use in the Cloud. 

  • 06/25/2010, Palo Alto, CA. Stanford Law School. The Seventh Annual E-Commerce Best Practices Conference. Open Source Software and Cloud Computing. 

  • 04/30/2010, Seattle, WA. Alliance of Angels, Investor Education Event. Best Practices for Start-Ups. Software Development: Legal and IP Due Diligence during Mergers and Acquisitions.

  • 11/06/2009, Brussels, Belgium. ITech Conference. Managing Open Source Software during Mergers and Acquisitions. Cutting edge developments in OSS during IT, IP, e-commerce and privacy matters. 

  • 10/20/2009, Boston, MA. Association of Corporate Counsel’s 2009 Annual Meeting. Open Source - Latest Developments; Presented by the IT, Privacy and eCommerce Committee: What in-house Counsel Needs to Know about Their Company’s use of Open Source Software. 

  • 10/06/2009, San Francisco, CA. American Conference Institute’s 15th Annual Conference on The Practical and Tactical Art of the Deal in Software Licensing Agreements. Negotiating and Drafting Sophisticated Agreements that achieve Business and Technical Goals. 

  • 08/20/2009, Seattle, WA. Law Seminars International. Fourth Annual Advanced Conference on Current IP Licensing 2009. Technology Acquisitions and Transactions Involving Open Source Software. 

  • 03/05/2009, New York, New York. World Research Group IP Conference. Monetizing & Maximizing IP. New models of Collaboration & Innovation. 

  • 01/22/2009, Seattle WA, University of Washington School of Law. Guest Lecturer, Professor Dan Laster’s Advanced Copyright Law class. Intellectual Property, Copyright & Software Licensing - Open Source Software.

  • 11/19/2008, New York, New York. PLI Open Source Conference. Open Source Software 2008: Benefits, Risks and Challenges for Software Users, Developers and Investors. 

  • 08/22/2008, Seattle, WA. Law Seminars International. IP Licensing - New Legal, Business And Regulatory Developments. Technology Acquisitions and Transactions Involving Open Source Software: New 3.0 GPL Licenses. Implied licenses for patents; integrating open source into proprietary software; licensing out; licenses with patent triggers; preparing for joint ventures and M&A transactions; effective compliance programs. 

  • 08/08/2008, New York, New York. American Bar Association Annual Meeting. IP&L Section. Life after GPLv3: New Developments in Open Source Software Licensing. 

  • 06/05/2008, Paris, France. International Federation of Computer Law Associations; IT Law Challenges in a Changing World: Global, Virtual, Open & Outsourced. Les logiciels libres: situation actuelle et tendances; les licences GPL. 

  • 04/24/2008, Las Vegas, Nevada. International Technology Law Association. 2008 World Technology Law Conference. Handling OSS in M&A Transactions. 

  • 04/16/08, San Jose, CA. 2008 Intellectual Property Symposium. IP Risks in Open Source Software. 

  • 03/26/2008, San Francisco, CA. Legal IQ, 5th Patent Strategies Conference. Examining US & International IP Trends and Addressing Key Licensing and Due Diligence Issues. Examining Due Diligence In Free And Open Source Software (FOSS). Discussing the scope of representation and warranties. 

  • 02/19/2008, West’s Legal Works: Live Webcast. Monsoon Multimedia and Beyond: Hot Topics You Need to Know about Open Source Software. 

  • 01/21/2008, Scottsdale, Arizona. CoDev 2008. How to maximize product development partnerships, value networks, and other external relationships. Open Source Software, Overcoming the Challenge of Developing in a Mixed Open Source and Propriety Environment. 

  • 12/03/2007, São Paulo, Brazil. ABDI - Associação Brasileira de Informática e Telecomunicações (Brazilian Information Technology and Telecommunications Association) annual seminar. Legal challenges and solutions in the Web 2.0 Era. 

  • 11/14/2007, New York, New York. PLI Open Source Conference. Developing Commercial Products for Open Source Platforms. 

  • 11/09/2007, London, England. The Olswang Open Source Summit. Open Source Software, Open Innovation and Software Patents. 

  • 11/06/2007, A Coruña, Spain. Facultad de Informática de la Universidad de A Coruña. Software Libre: La neutralidad tecnológica de las Administraciones Públicas. Open Source Software: Consumer Demands, Technology Neutrality and Innovation.  

  • 11/01/2007, London, England. ITech Conference. Cutting edge developments in IT, IP, e-commerce and privacy matters. Patent Cross-Licensing: A New Model for Open Standards 

  • 09/25/2007, Calgary, AL, Canada. University of Calgary Faculty of Law. Legal Speaker Series. Open Source Software, IP, Licensing, and Open Source during Acquisitions. 

  • 08/23/2007, Seattle, WA. Law Seminars International (LSI) Conference: Current Issues in Complex IP Licensing: Technology Acquisitions and Transactions Involving Open Source Software: Practical Approaches and Solutions to the Pervasive Use of Open Source Software in IT Development Projects. 

  • 06/18/2007, Palo Alto, CA. Stanford Law School. The Fourth Annual Stanford Ecommerce Best Practices Conference. Will Open Source Survive? 

  • 06/07/2007, Los Angeles, CA. International IT Law Conference: Southwestern University School of Law. Developing Commercial Products in an Open Source World. 

  • 05/23/2007, Live Audio Presentation. Management Round Table Audio Session. IP Protection and Open Source Licensing for Innovation: What You Should Know and Do - Before Inking the Deal. 

  • 05/16/2007, Atlanta, GA. Licensing Executive Society, 2007 Spring Meeting. Licensing In the Era of Intellectual Property Revolution. Strategic IP Due Diligence. 

  • 01/05/2007, Cambridge, MA. Harvard Law School. Guest Speaker: Cyber Law Day. Debate with Eben Moglen, General Counsel, Free Software Foundation. Topics: Software Patents, Intellectual Property, and the GPL Licenses. 


Published Legal Articles & Book Chapters

  • PLI Course Handbook. November 2008: Open Source Software 2008: Benefits, Risks and Challenges for Software Users, Developers and Investors. The Coexistence of Open Source and Proprietary Software. ISBN Number: 978-1-4024-1140-3 http://www.pli.edu/product/book_detail.asp?id=39631