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Tom is a senior associate in the San Diego office. Serving clients worldwide, he counsels on overall IP strategy, prosecutes patents and trademarks, conducts pre-litigation enforcement of IP rights, negotiates licenses, and conducts offensive and defensive diligence such as patentability and infringement studies. Tom serves a broad range of clients, from solo inventors, startups and small businesses to mid-size and large corporations.
Tom’s patent practice includes utility and design patent protection for a variety of technologies, including mechanical, medical, and aerospace innovations. Example particular technologies include cardiac devices and implants, intracranial devices, upper and lower limb prosthetics and orthotics, mobile devices, software, control systems, unmanned aerial vehicles (drones), high altitude balloons, automotive systems, industrial systems, semiconductor processing equipment, and more.
Recent client successes include Millipede Inc., developer of a transcatheter annuloplasty ring for treating severe mitral regurgitation. Tom helped prosecute Millipede’s patent portfolio and provided defensive patent diligence for its acquisition negotiations with Boston Scientific. In Jan. 2018, Boston Scientific agreed to an investment and acquisition option with Millipede for $90,000,000. In Dec. 2018, Boston Scientific exercised the acquisition option for an additional $450,000,000.
Additional highlights include:
- Author, Fashion & Beauty Blog: Trademarks Require “Use in Commerce” – But What If You Need Regulatory Approval Before Selling Your Product?
- Keynote Speaker, “Patent Basics for the Aerospace Industry,” at the 2019 Space Foundation Space Commerce Workshop
- Publications Coordinator for the firm’s medical device practice group, which leads the nation in medical device patent prosecution having obtained over 4,800 medical device patents since 1976 and 2,700 medical device patents since 2010
- Member of the firm’s pro bono committee and coordinates with the U.S. Patent & Trademark Office’s regional patent pro bono program to assist indigent individuals and non-profit organizations
- Co-Chair of the Licensing Executives Society (LES) for the San Diego Chapter
- Interned at NASA (aerodynamics) and was a mechanical engineer at Northrop Grumman, where he designed and tested complex structures and mechanisms for various spacecraft programs
- Holds a minor in Chinese and studied Chinese language and history at Shaanxi Normal University in Xian, China
- Named to IAM Strategy 300: The World’s Leading IP Strategists (2019) which “identifies the individuals who are leading the way in the development and implementation of strategies that maximize the value of IP portfolios”
- Named as “IP Stars - Rising Star” by Managing Intellectual Property (2018 and 2019)
- Named a “Top Author” by JD Supra Readers' Choice Awards, (2016) due to the high level of visibility and engagement attained with readers in the medical device industry
Co-author, An Innocent Abroad: A Successful Recovery of Trademark Rights in China, International Bar Association (IBA) Intellectual Property & Entertainment Law Committee Newsletter (May 2018)
Boston Scientific Announces Agreement for Investment & Acquisition Option with Transcatheter Annuloplasty Ring Developer Millipede, Inc., Medical Device Blog (February 2018)
FDA Exempts Numerous Medical Devices from 510(k) Premarket Notification Requirements, Knobbe Martens (August 2017)
Another Patent Law Win for Orange County-Based Masimo Corporation, Orange County Business Journal (November 2016)
Medical Device Outsourcing: Intellectual Property Considerations, Medical Design Briefs (October 1, 2016).
Contributor, 7 Intellectual Property Issues Startup Entrepreneurs Should Not Overlook, JD Supra Legal Perspectives (September 30, 2015).
Collaborative Innovation: intellectual property considerations, International Bar Association: Intellectual Property and Entertainment Law Newsletter (June 2016).
"Medical device development and collaboration," Intellectual Property Magazine (June 9, 2015).
Author, KnobbeMedical.com Blog
Author, Fashion & Beauty Blog
Speeches & Seminars
Keynote Speaker, "Patent Basics for the Aerospace Industry" Space Foundation Space Commerce Workshop at Aerospace Corp. (February 2019)
Presenter, "Developing and Enforcing Your Company's IP Rights in China (PRC)," Knobbe Martens Webinar (December 2018)
Presenter, "Intro to IP: Part 2: Some Basics of Patents," Knobbe Martens seminar, San Diego, CA (October 2016)
Presenter, "Intro to IP: Basics of Patents, Trademarks and Trade Secrets," Knobbe Martens seminar, San Diego, CA (July 2016)