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Joseph M. Guiliano
Partner
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Joseph Guiliano is the head of Ropes & Gray's Intellectual Property Rights Management Practice Group. In a practice spanning more than 15 years, Joe has handled intellectual property matters in a wide variety of technical disciplines including medical devices, cellular telephony, ATM networking, integrated circuits, semiconductor processing, interactive applications for cable and satellite television systems, Internet applications, business methods (including financial systems), retail transaction systems, smart cards, and computer systems and software.
Joe leads a team of technically sophisticated attorneys and registered patent agents in delivering timely, high quality patent prosecution services to clients ranging in size from small start-up companies to large, established, domestic and international corporations. He frequently provides advice to senior management on techniques for developing strategic U.S. and international patent assets and for maximizing return on existing assets.
Professional Experience
Joe has extensive experience representing clients in connection with patent prosecution, intellectual property transactions, patent infringement and trade secret misappropriation litigation, and opinion matters. He has developed a particular proficiency in counseling clients on intellectual property asset development and management strategies. He advises clients concerning competitive patents, including conducting product clearances and rendering written opinions of noninfringement and invalidity.
Joe's broad range of experience in intellectual property-related transactions includes negotiating exclusive and nonexclusive licenses, joint development agreements, software development agreements (including website development agreements) and IP asset purchase agreements. He also frequently conducts IP due diligence investigations in connection with mergers, acquisitions, asset purchases and strategic investments.
Joe maintains an active litigation practice that focuses on complex patent and trade secret misappropriation proceedings in federal courts throughout the country. He has developed a focused knowledge in formulating innovative business solutions that lead to favorable settlements of disputes.
Joe joined Ropes & Gray on January 1, 2005 as part of its combination with Fish & Neave, the firm he has been with since starting his career in patent law in 1991. Prior to going into practice, Joe was employed by one of the world's largest pharmaceutical and consumer products companies, where he designed and developed systems to automate laboratory processes and to support preclinical and clinical testing of pharmaceuticals.
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