James E. Malackowski, CPA, CLP
Co-founder and Senior Managing Director, Ocean Tomo | J.S. Held LLC
North Miami Beach, FL, UNITED STATES
Intellectual Property Hall of Fame inductee | Testifying Expert | Board Director | On Air Tech Expert
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Biography
James E. Malackowski, Intellectual Property Hall of Fame inductee, 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 for IP and financial-related cases in domestic and foreign courts. He served as expert in U.S. Federal Court, U.S. Bankruptcy Court, State Court, Court of Chancery, the Ontario Superior Court of Justice, 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, venture financing including expected risk / return, 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 is a prolific author, having crafted more than 40 publications. James E. Malackowski has made more than 180 related U.S. speeches and publications. He has addressed mass media audiences more than 20 times, including Bloomberg Morning Call, Bloomberg Evening Market Pulse, Bloomberg Final Word, CNBC Closing Bell, CNBC On the Money, CNBC Street Signs, CNBC World Wide Exchange, CBS News Radio and Fox Business National Television as well as other recognized news-based internet video channels.
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 (5)
Financial Services
Business Services
Investment Management
Non-Profit/Charitable
Research
Areas of Expertise (8)
Regulatory and Reporting Obligations
Corporate Accounting Investigations
Advisory Services
Management Consulting
Business Strategy
Financial Services
Intellectual Property
Intangible Assets
Accomplishments & Recognitions (6)
IP Hall of Fame Q. Todd Dickinson Award (professional)
2022 IP Hall of Fame
Inductee, 87th member (professional)
2022 IP Hall of Fame
IAM Patent 1000: The World’s Leading Patent Professionals (professional)
2015-2021 IAM Magazine
Regional Semifinalist (professional)
2019 and 2020 EY Entrepreneur Of The Year®
IAM Global Leaders (professional)
2020 IAM Magazine
50 Intellectual Property Trailblazers & Pioneers (professional)
2014 The National Law Journal
Media Appearances (6)
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.
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.
Here’s who Apple and Epic are calling to testify in next week’s trial
The Verge online
2021-04-28
Expert witnesses [....] James Malackowski, CEO, Ocean Tomo
The big battle over intellectual property
CNBC tv
2018-03-26
James Malackowski of Ocean Tomo gives his take on the trade tariffs and how this could weigh on intellectual property.
The Intangible Corporation
Bloomberg online
2015-03-18
James E. Malackowski, chief executive officer of Ocean Tomo, the intriguingly named1426696761715 merchant bank that assembled this data, predicts that the tangibles/intangibles balance will shift back a bit in the next few years as various forces (higher labor prices in China, cool new manufacturing technologies, etc.) “fuel a return to tangible domestic investments.”
Valuing intangible assets
CNBC tv
2013-08-05
The Obama Administration vetoed an International Trade Commission patent ruling, banning the sale of older iPhones and iPads. Jim Malackowski, Ocean Tomo, shares what this may mean for all valuing companies.
Affiliations (4)
- Licensing Executives Society, Inc. : Past President
- United States Intellectual Property Alliance - USIPA : Founding Board Member and Member of the Executive Committee
- National Inventors Hall of Fame : Director
- University of Notre Dame : Judge
Articles (2)
Emerging IP monetisation solutions: The institutionalisation of an IP exchange
International Journal of Intellectual Property Management2012 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.
What Is Patent Quality? A Merchant Banc’s Perspective
les Nouvelles2008 The question “What is Patent Quality?” is one that has long been answered not by the authors of this paper but by the marketplace itself. It has been defined by the actions of patent holders in their decisions to maintain patents of quality and abandon patents of lesser quality and value. Ownership of quality patents has been rewarded by both public and private markets with a scale and precision that simply has not been well understood. Our statistical research shows not only that the marketplace appreciates quality patent assets, but that many of the attributes which drive quality assessment by market participants are well correlated to those that affect investor returns.
Links (4)
Patents (10)
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.
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).
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.
Marketplace for trading intangible asset derivatives and a method for trading intangible asset derivatives
9058628
2015 A marketplace for trading derivative financial contracts includes a forum that publishes a financial contract and allows the financial contract to be traded by one or more market participants. The financial contracts are based on one or more underlying intangible assets of one or more entities. The price of the contract is derived from a measure of value of the one or more underlying assets of the particular financial contract. The forum may include an exchange for trading financial contracts and may also host trading of over-the-counter financial contracts.
SYSTEM AND METHODS FOR VALUING AND TRADING INTANGIBLE PROPERTIES AND INSTRUMENTS
20140358764
2014 A system and methods providing an exchange network for valuing and trading of intangible instruments, such as one or more rights to an intangible property including a given intellectual property (patents, copyrights, trademarks, trade dress, trade secrets and/or the rights of publicity). The system and methods permits a party to access a database of the intangible instruments including data relating to identifying value of the instrument. The system and methods permits a party to perform due diligence on the intangible instrument and, as a result, to formulate a bidding strategy for the intangible instrument that the bidder believes is appropriate. If the bidder and the owner reach agreement on the price, a transaction for the intangible instrument is executed between the parties.
FINANCIAL INSTRUMENT BASED ON CONTENT AND METHODS FOR VALUATION
20140358764
2014 The present invention is a system and methods by which an investment vehicle can be established that is directed to one or a very limited specific form of content. More specifically, the system and methods of the present invention creates a financial instrument directed to specific content—such as a specific technology or specific artistic or literary work—that may be issued, thereby providing investors with the opportunity to invest in the specific content or aspect of that specific content.
System of providing information to a telephony subscriber
8880031
2014 An information fulfillment system provides information to a user having a wireless communication device. Upon manual or automatic input of an access code to the wireless communication device, the fulfillment center delivers information based on the access code. Automatic verification, connection, and/or billing modification processes are provided for implementation of the system and method.
METHODS AND SYSTEMS FOR UTILIZING INTELLECTUAL PROPERTY ASSETS AND RIGHTS
20140304191
2014 A method of utilizing an intellectual property grouping owned by a patent entity to generate income. The method includes acquiring rights in a first intellectual property asset from a seller on behalf of a patent investment entity, providing compensation to the seller in exchange for the first intellectual property asset, granting less than all of the rights in the first intellectual property asset to the seller of the intellectual property asset in exchange for a stream of payments, wherein granting less than all of the rights in the first intellectual property asset creates residual rights in the first intellectual property asset, and utilizing the residual rights in the first intellectual property asset to generate income for the patent investment entity.
Financial instrument based on content and methods for valuation
8831985
2014 The present invention is a system and methods by which an investment vehicle can be established that is directed to one or a very limited specific form of content. More specifically, the system and methods of the present invention creates a financial instrument directed to specific content—such as a specific technology or specific artistic or literary work—that may be issued, thereby providing investors with the opportunity to invest in the specific content or aspect of that specific content.
IP CONTENT DISCOVERY PLATFORM
20140229393
2014 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.
Languages (1)
- English
Education (1)
University of Notre Dame: B.B.A. 1985
With majors in Accountancy and Philosophy. Graduated Summa Cum Laude.
Licenses and Certifications (5)
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.
Accredited in Business Valuation, ABV™
American Institute of Certified Public Accountants Certificate Number 4278 Issued May 31, 2014; Expires August 1, 2024.
Accredited in Blockchain Fundamentals for Accounting and Finance Professionals
American Institute of Certified Public Accountants Certificate Number 15860970 Issued 2018; Exprires 2020.
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