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Paul Schramm

Partner

1800 Broadway, Suite 300, Boulder, CO 80302

Paul’s practice focuses on strategic patent portfolio development.

He manages a number of large, sophisticated international patent portfolios in the electronics, telecommunications, and computer arts, and oversees the work of a number of junior attorneys, patent agents, and engineers within the patent group. Paul is skilled at maneuvering applications through complex procedures in the U.S. Patent and Trademark Office, including re-issue and re-examination proceedings.

Paul worked in patent preparation and prosecution for some years before obtaining his law degree, including work as a patent agent for a national IP-specialty firm. From his many years of experience, he has developed a collaborative approach with the USPTO. Paul often achieves great results for his clients with a uniquely strategic and thoughtful examiner interview practice.

Before becoming a patent agent, Paul worked for a private R&D firm, where his team designed and implemented a network of monitoring devices employed in exploratory drilling operations. Paul is a named inventor on four U.S. patents resulting from this work.

Experience

Preparation and Prosecution
  • Patent portfolio development and management 
  • Domestic and international patent preparation and prosecution 
  • Standards-related patents 
Opinions and Counseling
  • Patent infringement and validity analysis 
  • Non-infringement/invalidity opinions 
  • Product design counseling 
  • Pre-litigation counseling 
  • Corporate IP procedure development counseling 
  • Strategic patent portfolio development 
  • Consulting on product design 
Patent Licensing and Due Diligence
  • Licensing negotiations and strategies 
  • Strategic patent acquisitions 
  • Product clearances 
  • IP due diligence
Pre-litigation and Litigation Strategies
  • Inter Partes Review (IPRs) 
  • Post-Grant Review Proceedings (PGRs) 
  • Pre-litigation strategies 
  • Preparing claim charts 
  • Preparing validity and infringement opinions
TECHNOLOGIES

Electrical/Electronic/Computer Science
Wireless telecommunications, standards-based technologies, DSL and PLC wireline communications, electrical switches and interconnects, display dand headsets, semiconductors, control systems, communication systems, printing devices and protocols, digital and analog circuits, digital memory, optics, nanotechnology, system architectures, digital signal processing, streaming media, encryption, holographics, and optical media

Education

Bar Admissions

Professional and Civic Affiliations

  • Intellectual Property Section, Colorado Bar Association, Member 
  • Electronic and Computer Law Committee, American Intellectual Property Law Association, Member
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