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Education

University of Denver Sturm College of Law, J.D., 1976

Polytechnic Institute of Brooklyn, M.S., Electrical Engineering, 1970

New York University, B.S., Electrical Engineering, 1969

 

Bar Admissions

Licensed to practice before the United States Patent and Trademark Office

Colorado

 

 

James M. Graziano

Of Counsel

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Mr. Graziano's primary focus is patent prosecution and patent portfolio development in various high technology fields. His expertise includes attaining an understanding of the client's relevant product market, the client's competitors, the present technology & technology trends, the corresponding international perspective, legislative trends in the various countries of interest to the client, licensing opportunities, and then integrating all of these factors into a coordinated portfolio development plan that aggressively delimits the client's present and future intellectual property rights. The patents filed in this process are broad in scope and interlocking in nature to present an eminently defensible patent position for the client. Mr. Graziano is also an inventor, with 14 issued U.S. Patents, 18 pending U.S. Patent applications, 1 issued Australian Patent and 24 pending foreign applications. He is also an author of "The Quest for the Paperless Office-Electronic Contracting: State of the Art Possibility but Legal Impossibility?" Santa Clara Computer and High Technology Law Journal, 1989, which paper provided the legal basis for the use of electronic signatures on documents. He has also presented lectures to various groups on the pending changes in patent law and procedures, the most recent one being to the Colorado Nanotechnology Alliance on 23 August 2007.

Mr. Graziano's educational background includes undergraduate work at New York University, where he was awarded a B.S.E.E. degree in 1969. He was then employed by Bell Telephone Laboratories as a member of the technical staff, in the field of telephone switching systems. Bell Laboratories granted Mr. Graziano a fellowship to obtain his M.S.E.E. degree at the Polytechnic Institute of Brooklyn in 1970 and then transferred him to the Denver Works to engage in the design and development of telephone switching systems. He then attended the University of Denver to pursue his doctoral studies. Mr. Graziano transferred to the legal department at Bell Telephone Laboratories and attended University of Denver School of Law, where he was awarded his JD degree in 1976. Mr. Graziano was ultimately responsible for worldwide patent prosecution and licensing of all Bell System patents relating to customer premises equipment. Mr. Graziano entered private practice after 18 years with the Bell System.

Technical Expertise

Mr. Graziano has almost 35 years of experience in the fields of communications technology, computer science, software, circuit and systems design. He also has worked in the medical device field, Internet-based systems, and neuromorphic systems. His specialty is complex technologies and the development of broad patent portfolios to protect innovative new technologies. His record in prosecuting patent applications is exemplary - he has never lost an appeal to the U.S. Patent & Trademark Office Board of Appeals and no case he prepared and prosecuted has ever been successfully challenged in litigation.

Examples of Mr. Graziano's portfolio development efforts include:

Develop a powerful IP portfolio to secure the rights to provide economical air-to-ground cellular service. This portfolio includes patents, on a worldwide basis, that define not only the basic network architecture and service offering, but also the station sets used in this domain and the revenue generating services that can be provided using this network architecture.

Develop a forward-looking patent portfolio to protect a revolutionary 3G cellular multicasting architecture. This project included a thorough analysis of the inventive concepts proposed by the client, combined with a review of the technical and commercial viability of the proposed architecture prior to initiation of patent protection. The patent preparation and prosecution benefited from an intense work effort to devise a prosecution and marketing strategy that was tied to an in-depth insightful understanding of technology and the services supported by this innovation. The resultant patent filings predated by three years the corresponding work done by the 3G Cellular Standards bodies and the major cellular communications companies.

Prepare a portfolio of patent applications that define the solution to the HIPAA patient privacy problem. These patent applications provide an economical method of enabling patients to control the distribution of their medical history information and also simplify the exchange of this information among authorized parties by using a paperless paradigm.