)
Tom is a Partner in the San Diego office and serves clients worldwide in aerospace, mechanical, and medical technologies. As a former aerospace engineer with experience at NASA, Tom counsels aerospace and other businesses on overall IP strategy, performs IP audits, 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 has particular experience with assisting startups from the conceptual design phase through acquisition. One recent example is Millipede, Inc. – Tom prosecuted the patent portfolio and provided defensive patent diligence, resulting in investments and an acquisition by Boston Scientific totaling $540,000,000.
Example particular technologies in Tom’s patent experience include aircraft, rockets, unmanned aerial vehicles (drones), high altitude balloons, control systems, and more.
Additional highlights include:
- Keynote Speaker, “Patent Basics for the Aerospace Industry,” at the 2019 Space Foundation Space Commerce Workshop
- Former Mechanical engineer at Northrop Grumman, where he designed and tested complex structures and mechanisms for various spacecraft programs
- Interned at NASA Armstrong Space Center, Aerodynamics Branch, where he analyzed data for the Quiet Supersonic Platform
- Inventor of the “Inflate-A-Brake,” a system for de-orbiting small satellites to reduce space debris
- 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
- 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
- Trademarks Require “Use in Commerce” – But What If You Need Regulatory Approval Before Selling Your Medical Device?
- FDA Issues Guidance on "Abbreviated" and "Special" 510(K) Pathways
- Cook Medical Petitions for Inter Partes Review (IPR) of Medtronic “Jervis” Patent
- Medical Device Market Returns and Recent Industry Activity
- Boston Scientific Exercises Option to Acquire Transcatheter Annuloplasty Ring Developer Millipede Inc.
- Medical Device Connectivity Market Reported to Top $2.6 Billion by 2023
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)