Tom represents clients in patent and trademark prosecution, intellectual property litigation, and post-grant patent challenges before the Patent Trial and Appeal Board (PTAB). Tom has a broad base of experience in various technological and business areas, particularly in pharmaceutical, biotechnology, chemical and medical device inventions. He drafts invalidity opinions, investigates freedom to operate, counsels on strategic portfolio management, and conducts due diligence investigations prior to acquisition or merger.
He has extensive scientific research experience in both industry and academic settings. Tom worked as a pharmacologist in the Advanced Technology Division of Abbott Laboratories to identify safe and efficacious drug candidates. His skill as a researcher was recognized when Abbott honored him with its Global Pharmaceutical Research and Development Award for Leadership. Tom also conducted various chemical and biological research both at the University of Notre Dame and University of Chicago. His chemical research was directed toward organometallic catalysis. His biological research involved investigating the underlying causes of diabetes — including the molecular biology of ion channels and the role genetics plays in beta cell dysfunction. This experience as a scientist enables Tom to effectively communicate with clients and inventors seeking patent protection or counseling.
Tom has published peer-reviewed scientific journal articles, including multiple articles in the Journal of Medicinal Chemistry and the Journal of Cardiovascular Pharmacology. Tom has been published in the National Law Journal and coauthored book chapters in the American Bar Association’s publications ANDA Litigation and Pre-ANDA Litigation. He is also often sought out for commentary and counseling on emerging trends and proposed rules relating to PTAB trials.
He has represented pro bono clients through the DePaul Technology/Intellectual Property Clinic, Equip for Equality and Lawyers for the Creative Arts. He is also a trained mediator and has been certified by the Center for Conflict Resolution in Chicago.
Tom has been listed in the 2016-2018 editions of Illinois Super Lawyers as a Rising Star.
- Drafted and prosecuted patent applications on pharmaceutical and medical device inventions useful for the treatment of cardiovascular, renal, oncology, autoimmune, neurological, and viral diseases.
- Prosecuted patent applications directed to diagnostic medical devices.
- Prosecuted patent applications directed to nutritional supplements.
- Prosecuted patent applications directed to green technology where biomass is converted into transportation fuels.
- Conducted due diligence investigations for pharmaceutical, biotechnology, medical device and green technology clients prior to acquisition, licensing, or investment.
- Conducted due diligence investigations for clients in the chemical arts, including industrial plastics and hydraulic fracturing.
- Conducted evaluations of litigation and AIA trials for clients prior to investment.
- Drafted freedom-to-operate and patentability opinions for pharmaceutical, biotechnology, medical device and chemical inventions.
- Drafted inter-institutional agreements, licenses, operating agreements, assignments, material transfer agreements and other contracts involving research and development.
- Counseled start-up clients, including e-commerce companies, on patent portfolio strategy and management.
- Represented life science clients in federal district court regarding in patent litigation involving drug eluting stents and an ADHD medication.
- Represented life science client in federal district court regarding trade secret litigation involving stem cell technology.
- Represented life science client in federal district court regarding alleged breach of consent decree in technology relating to use of mutant proteins.
- Represented Patent Owners and Petitioners in Inter Partes Review and Covered Business Method Review before the Patent Trial and Appeal Board.
- Defended clients in investigations before the International Trade Commission in matters involving a proprietary coolant chemical and a design patent to a vehicle.
- U.S. Patent and Trademark Office
- U.S. District Court for the Northern District of Illinois
- U.S. Patent Trial and Appeal Board
- U.S. Court of Appeals for the Federal Circuit