James Gatto

Practice Areas

Jim Gatto is a partner in the Intellectual Property Practice Group in Sheppard Mullin's Washington, D.C. office. He is Leader of the Blockchain & Fintech Team, Social Media and Games Team and Open Source Team.

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.

Professional Memberships

Past and Present Memberships and Offices:

Member, ABA Copyright and Emerging Technology Committee - NFT Subcommittee

Co-Chair Blockchain and Fintech Committee; Copyright Committee; Patent Committee; Open Source and Standards Committee, American Intellectual Property Law Association

Member, Blockchain Games Association

Member, Government Blockchain Association

Co-Chair, Social Media and Games Committee; Co-Chair, Startup Law Committee, International Technology Law Association

Member, The Association of Media & Entertainment Counsel

Member, International Association of Privacy Professionals

Advisory Board Member; Chair, Legal Committee Association of Virtual Worlds

Chair, Open Source Subcommittee; Electronic and Computer Law Committee; Patent Law Committee; Emerging Technology

Member, Arts, Entertainment, Media & Sports Law Section, District of Columbia Bar

Editorial Advisory Board Member, The Lexis Practice Advisor Journal

Former President, Patent Lawyers Club of Washington

Member, Open Source Committee, Intellectual Property Owners (IPO)

Adjunct professor, legal strategy for startups, Johns Hopkins MBA program