James E. Malackowski, CPA, CLP

Chief Intellectual Property Officer, J.S. Held Co-founder and Senior Managing Director, Ocean Tomo

  • North Miami Beach FL

IP Hall of Fame inductee | LES Gold Medal Recipient | Technology Licensing Testifying Expert | Board Director | On Air Tech Expert

Contact

J.S. Held LLC

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Biography

James E. Malackowski is a top IP expert with substantial experience as a Board Director for leading technology corporations, research organizations, and companies with brand management issues.

Mr. Malackowski has served as an expert in U.S. Federal Court, U.S. Bankruptcy Court, State Court, Court of Chancery, the Ontario Superior Court of Justice, the Federal Court of Australia, the U.S. Patent and Trademark Office Patent Trial and Appeal Board, and global arbitrations on questions relating to intellectual property economics including the subject of valuation, reasonable royalty, lost profits, price erosion, commercial success, corrective advertising, creditor allocations, Hatch Waxman Act market exclusivity, business significance of licensing terms including RAND obligations and exhaustion, venture financing including expected risk / return, the existence of markets or potential markets to assess copyright fair use, and equities of a potential injunction.

Mr. Malackowski’s experience extends to matters of general business valuation and commercial disputes, both domestic and foreign. Mr. Malackowski has publicly addressed policy issues affecting international trade and has provided expert opinions concerning antidumping and countervailing duties imposed by the U.S. Department of Commerce as well as testimony on domestic industry, bond, and remedies before the International Trade Commission.

Mr. Malackowski is a frequent speaker on emerging technology markets and related financial measures. He has addressed mass media audiences including Bloomberg Morning Call, Bloomberg Evening Market Pulse, Bloomberg Final Word, CNBC Closing Bell, CNBC On the Money, CNBC Street Signs, CNBC Worldwide Exchange, CBS News Radio and Fox Business National Television as well as other recognized news-based internet video channels. Mr. Malackowski is a current or past judge for numerous new venture competitions awarding financial grants recognizing intellectual property protected products and services developed by students, university faculty, and professional entrepreneurs.

Mr. Malackowski has more than twenty issued U.S. patents. He is a frequent instructor for graduate studies on IP management and markets. Recently, Mr. Malackowski has lectured on application of intangible asset valuation models to corporate Environmental, Social, and Governance (ESG) standards, including applicability of United Nations Sustainable Development Goals (SDGs) to investment decisions.

Industry Expertise

Financial Services
Business Services
Investment Management
Non-Profit/Charitable
Research

Areas of Expertise

Regulatory and Reporting Obligations
Corporate Accounting Investigations
Advisory Services
Management Consulting
Business Strategy
Financial Services
Intellectual Property
Intangible Assets

Accomplishments & Recognitions

The LES Gold Medal

2025
The Licensing Executives Society International (LES)

IP Hall of Fame Q. Todd Dickinson Award

2022
IP Hall of Fame Academy

IP Hall of Fame Inductee, 87th member

2022
IP Hall of Fame Academy

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Media Appearances

Interview with James E. Malackowski, the Founder of Ocean Tomo – Patent Auctions, Managing Patent Portfolios, Blockchain in the Field of IP, the Market For Data Rights

IP Fridays podcast  online

2025-01-31

In this episode of IP Fridays, I speak with James E. Malackowski, an intellectual property (IP) pioneer best known for founding Ocean Tomo. James shares how Ocean Tomo introduced the world’s first large-scale public auctions for patents, trademarks, and copyrights. He also explains how these auctions helped create market-based “price discovery” for IP assets—something that had never been done so openly before.

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Multinationals in Australia will feel Pepsi tax defeat for years

Clayton Utz  online

2023-12-21

Having found that a royalty arose, the court needed to quantify it. It ultimately accepted that a relief from royalty method was most appropriate, adopting part of the analysis of the ATO’s expert, James Malackowski, in arriving at a rate of 5.88% of net revenue.

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Strategy 300 Global Leaders 2024 - James E Malackowski

IAM  online

2023-11-30

James Malackowski is co-founder of Ocean Tomo, a part of J.S. Held. Along with Supreme Court Justice Stephen Breyer, he was inducted as the 87th member of the IP Hall of Fame. On more than 100 occasions, Mr Malackowski has served as an expert in various US and international courts, the USPTO PTAB and global arbitrations on questions relating to IP economics, licensing and damages.

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Affiliations

  • United States Intellectual Property Alliance - USIPA : Founding Board Member and Member of the Executive Committee
  • The World Economic Forum: 2011 Network of Global Agenda Councils
  • University of Notre Dame – Venture Builders Community : Judge
  • Young President’s Organization : Member YPO Gold Miami
  • Private Directors Association : Member
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Articles

Evolving Landscape of Technology Rights Enforcement

JD Supra

2025

Established 25 years ago at the turn of the century by the World Intellectual Property Organization (WIPO), World IP Day celebrates the unique contributions made by global inventors and creators. Over the past half century, intangible asset value has skyrocketed from 17% of S&P 500 market value in 1975, to 68% in 1995, to more than 90% today. Ocean Tomo leadership and their predecessor firms have been an active participant in IP markets for decades and have seen this evolution firsthand.

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Peeling Back the Value: Why Art Is Worth More Than Meets the Eye

Claims Journal

2025

Not since “Banksy’s Girl with Balloon” unexpectedly self-destructed on the Sotheby’s auction floor has a work of art made such a sensation as the “duct-taped banana.”

When Italian-born, New York-based artist Maurizio Cattelan debuted “Comedian” at Gallery Perrotin’s booth at Art Basel Miami Beach in 2019, it drew such a massive crowd it had to be removed from the wall. It immediately went viral and stimulated worldwide discussions and debates about the nature and value of art. It caused equal parts outrage and intrigue and left many asking – how is this conglomeration art?

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Emerging IP monetisation solutions: The institutionalisation of an IP exchange

International Journal of Intellectual Property Management

2012

This paper examines whether moving licensing from the traditional bilateral contract model to an exchange model will lead to more efficient price discovery and, ultimately, more liquidity in the market for IP rights transfer. Using the recently created Chicago-based Intellectual Property Exchange International (IPXI) as a model, we address the rationale for such an exchange and the mechanisms by which it can operate. We contend that IPXI's business model, which is built around unit licence right (ULR) contracts - which may be seen as a paid-up non-exclusive licence to the purchaser - addresses some of the current inefficiencies in IP management. However, the market efficiency that is needed to turn IP rights into a liquid asset inevitably takes time to evolve. Without community support for and participation in the exchange, from both buyers and sellers, the market cannot be established.

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Social

Patents

IP CONTENT DISCOVERY PLATFORM

20170132732

2017

A medium is disclosed that incorporates instructions including: a user interface module that receives from a user a first work-targeting input, the first work associated with intellectual property; an asset identifier module that identifies automatically, based on a relation to the first work-targeting input, the first work; the user interface module receiving, as a first work-adapting input, from the user, an input for adapting, modifying or creating a derivative work from the first work; and an adaptation generator module that generates automatically a record of a grant in rights in the adaptation of the first work according to the first work-adapting input, and provides a report of the grant in the adaptation of the first work to the user.

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Eyewear with exchangeable temples housing a radio frequency transceiver

9244292

2016

A wireless ad hoc pico network is formed by eyewear having a radio frequency transceiver and other devices such as a computer, a bracelet and a telephone having similar transceivers mounted on them. Master slave relationships are configurable. Other devices, such as a radio, a CD player, a hand held global positioning satellite system and a heart rate monitor, having similar transceivers, can also be connected with the transceiver of the eyewear. The transceivers operate on a globally available, unlicensed radio band of 2.45 gigahertz (GHz).

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EYEWEAR WITH EXCHANGEABLE TEMPLES HOUSING A RADIO FREQUENCY TRANSCEIVER

20160109729

2015

A wireless ad hoc network may be formed by eyewear having a radio frequency transceiver with other devices having compatible radio frequency transceivers. The transceivers may operate in an unlicensed radio frequency band at 2.45 GHz. The eyewear may include at least one detachable temple, and the radio frequency transceiver of the eyewear may be embedded in the at least one detachable temple. Other devices may also be embedded in the at least one detachable temple. The at least one detachable temple may be electrically connected to a frame of the eyewear when in an open position.

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Languages

  • English

Education

University of Notre Dame

B.B.A.

1985

With majors in Accountancy and Philosophy. Graduated Summa Cum Laude.

Licenses and Certifications

CLP

Certified Licensing Professional
Certificate Number 1606
Issued July 1, 2008; Recertification through November 30, 2023.

Registered Certified Public Accountant

State of Illinois Certificate Number 41,187
License No. 239.007831
Issued October 3, 2006; Expires September 30, 2024.

Certified in Financial Forensics, CFF™

American Institute of Certified Public Accountants
Certificate Number 391
Issued July 31, 2008; Expires August 1, 2024.

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Spotlight

3 min

J.S. Held Announces the First Global Consulting Company Chief Intellectual Property Officer

Global consulting firm J.S. Held proudly announces the appointment of intellectual property (IP) expert James E. Malackowski as the first Chief Intellectual Property Officer (CIPO) of a global consulting company. J.S. Held Chief Executive Officer Lee Spirer observes, “In today's knowledge-based economy, the role of CIPO serves an important strategic and operational role both internally and in support of clients.” Protecting J.S. Held Intellectual Property and Other Intangible Assets J.S. Held experts have developed methodologies, frameworks, proprietary tools, and research that support client work. The CIPO partners across the business to ensure that these intangible assets are identified, protected, and leveraged to benefit the business. “Having dedicated IP leadership will help the company move faster in developing and deploying new methodologies, while ensuring reasonable measures of protecting our innovations,” noted James E. Malackowski. Managing J.S. Held Intellectual Property and Other Intangible Assets J.S. Held maintains a robust portfolio of patents including a “System and Method for Financing an Insurance Transaction”, trademarks, data, trade secrets, and other proprietary technologies that support client work. “As CIPO, I intend to partner with company leadership and our professional experts across the globe to manage and monetize the many patent, trademark, data, and other proprietary assets that set J.S. Held apart among our competitors, benefitting clients and our investors,” added James E. Malackowski. Industry’s Most Comprehensive Global Intellectual Property Consulting Group Ocean Tomo, a part of J.S. Held, is rooted in an expansive understanding of intellectual property (IP) value and risk, providing a foundation of Expertise for the Innovation Economy™. Built upon more than three decades of experience assessing IP in the most rigorous of venues state, federal, and international courts, Ocean Tomo clients benefit from continuous feedback between litigation economic damage outcomes, transaction pricing, capital market valuations, debt financing terms, equity assessments, and deep technical insight. The team possesses the most comprehensive and market-tested understanding of IP value. Financial, market, and technical experts uniquely understand the contributory value of patented inventions, know-how, brands, and copyrights that permeate every business, viewing IP not simply as an isolated asset, but as an integral component of enterprise value. Multidimensional Intellectual Property-Informed Experts Benefit J.S. Held Clients Intellectual property expertise permeates the global organization. Beyond the expertise within J.S. Held’s dedicated IP practice Ocean Tomo, a part of J.S. Held, multidisciplinary experts across J.S. Held combine intellectual property expertise to core specializations, including: Artificial Intelligence (AI) Business Intelligence Construction Advisory Enterprise Risk Management Fraud Investigations Forensic Accounting Insurance Claims Consulting Restructuring, Turnaround, Receivership, and Bankruptcy Tangible and Intangible Asset Value Understanding The depth and breadth of J.S. Held’s work in the property and casualty insurance market and Ocean Tomo’s work across all forms of intellectual property and other intangible assets uniquely combine to create a strong foundation in risk assessment, data analysis, global awareness, regulatory compliance, technological adaptability, and risk mitigation. Collectively, these skills better equip J.S. Held experts to assess business risk across diverse geographies, geopolitical landscapes, regulatory frameworks, and technological advancements for the benefit of our clients. Learn more about the new J.S. Held Chief Intellectual Property Officer, James E. Malackowski: Looking to know more or connect with James E. Malackowski? Simply click on the expert's icon now to arrange an interview today. For any other media inquiries contact : Kristi L. Stathis, J.S. Held +1 786 833 4864 Kristi.Stathis@JSHeld.com

James E. Malackowski, CPA, CLP

1 min

Video Insights: What Boards of Directors Need to Know About Tariffs

Boards of directors globally are confronting unknown circumstances as a result of the current quickly shifting tariff and trade environment. Business risks and opportunities are magnified during such times, compelling boards to seek the right strategies in order to meet these challenges. In this video, Brian Gleason, John Peiserich, James E. Malackowski, and Mariano de Alba – experts in business turnaround, supply chain, intellectual property, and political risk – outline emerging considerations for boards of directors in light of changing tariff policies, including: Tracking the financial impact of tariffs and effects on company supply chains Understanding changes to regulatory requirements and whether internal policies need to be modified Planning for shortand long-term effects on intellectual property Adjusting communications between the board and senior management To view more of our Tariffs and Trade Series expert analysis and commentary, visit: Looking to know more or connect with John Peiserich and James E. Malackowski? Simply click on either expert's icon now to arrange an interview today. If you are looking to connect with Brian Gleason or Mariano de Alba contact : Kristi L. Stathis, J.S. Held +1 786 833 4864 Kristi.Stathis@JSHeld.com

James E. Malackowski, CPA, CLPJohn Peiserich, Esq.

1 min

Video Insights: How Senior Management Teams Can Respond to Tariffs

Companies around the world are facing increasing uncertainty brought on by the unpredictable and rapid shifts in tariff policies. As a result, corporate leaders are seeking ways to adapt and respond to the sudden and unprecedented changes in the international trade landscape. In this video, Brian Gleason, John Peiserich, James E. Malackowski, and Livia Paggi – experts in turnaround, supply chain, intellectual property, and political risk – discuss key strategies for senior management teams to address evolving tariff policies, including: Updating business forecasts and understanding company liquidity How companies can optimize their intellectual property (IP) value and mitigate risk How to approach the unique risks associated with planning and permitting for capital projects How to manage geopolitical volatility from shifting tariffs in the dealmaking process To view more of our Tariffs and Trade Series expert analysis and commentary, visit: Looking to know more or connect with John Peiserich, Livia Paggi and James E. Malackowski? Simply click on either expert's icon now to arrange an interview today. If you are looking to connect with Brian Gleason contact : Kristi L. Stathis, J.S. Held +1 786 833 4864 Kristi.Stathis@JSHeld.com

James E. Malackowski, CPA, CLPJohn Peiserich, Esq.Livia Paggi
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