James DeCarlo

Practice Areas

Intellectual Property & Technology

Intellectual Property Litigation

Emerging Technology

Augmented Reality & Virtual Reality

Career

Jim DeCarlo is a Shareholder in Greenberg Traurig’s Intellectual Property and Technology Practice. A registered patent attorney and electrical engineer, he is actively involved in virtually all aspects of intellectual property counseling. Jim started his career in the computer industry, and since transitioning to law has spent over 25 years litigating, licensing and procuring patents in the software, hardware, internet and networking spaces, among many others. Jim’s experience includes litigating patent matters in District Courts around the country, handling matters before the PTAB, counseling clients on the strategic use and management of intellectual property assets, and drafting infringement, validity and freedom to operate opinions.

He also counsels clients on the drafting and negotiating of complex technology agreements and directs the prosecution of patent applications in areas such as networking, artificial intelligence, cloud computing, virtual and augmented reality, IoT, streaming media, electronic commerce, Internet search engines, search advertising, client/server systems, mobile and land based telecommunications, and computer software and hardware.

Jim’s litigation and prosecution matters have covered other wide-ranging technology areas including semiconductors, semiconductor fabrication, pharmaceuticals, medical devices, fiber optics, cameras, injection molding, manufacturing, toys, pulp and paper, steel production, electronics and electro-mechanical devices.

Jim’s clients in the US and abroad range from start-ups with one or two key patents to giants with thousands of patents worldwide. A frequent author and lecturer on patent law issues, he is relied on by clients to assist in protecting their most significant technology in a manner that will stand up in litigation, to defend against charges of infringement frequently brought by patent assertion entities, and to work with in-house counsel to develop processes and procedures to effectively manage worldwide patent portfolios. Jim also maintains strategic relations with the USPTO, and has conducted hundreds of personal interviews with US Patent Examiners to more rapidly move his clients’ cases to allowance.

Concentrations:

Intellectual property litigation

Intellectual property counseling

Patent procurement

Technology and emerging companies

Professional Memberships

Member, Orlando Tech Council

Patent Litigation Committee On-line Program Coordinator, American Intellectual Property Lawyers Association

Former Co-chair, Intellectual Property Section, New York County Lawyers Association

Member, American Bar Association

Member, New York Bar Association

Publications

Listed, Chambers USA Guide, 2014-2016, 2019-2022

"Recognised Practitioner," 2019

Personal

J.D., cum laude, New York Law School, 1991

B.S., Electrical Engineering, Worcester Polytechnic Institute, 1980