Thomas W. Tolpin

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Thomas W. Tolpin (Tom) is a patent and trademark attorney with more than 30 years of experience. An inventor himself, Mr. Tolpin has been granted several patents of his own. He has been selected a “Leading Lawyer in Intellectual Property Law” and a designated “Illinois Super Lawyer” by the Leading Lawyers Network. He has been recognized with the highest rating “AV” by the Martindale-Hubbell Law Directory.

Thomas W. TolpinAfter over 25 years in practice, in 2008, Tom co-founded Tolpin & Partners, PC with his son Brett with the vision of a full service intellectual property (IP) law firm that includes experienced family and non-family IP attorneys and professionals to efficiently and inexpensively provide for complex and routine IP matters.For decades, Tom has maintained an outstanding record for counseling clients in intellectual property law matters. From patent prosecution to trial strategy, Tom creates innovative solutions and strategies to fit the needs of his clients, as well as, to increase the scope and protection of patents and trademarks and the acquisitions of intellectual property assets.

Tom handles all areas of technology, including: computers, telecommunications, electronics, semiconductors, pharmaceuticals, chemicals, machinery, automation, vehicles, farm equipment, lasers, medical devices and procedures, diagnostic equipment, food processing, plastic molding, engineering techniques, consumer products, business methods and software.

Tom counsels clients on enforcement, trial strategy and risk management in view of the business objectives of the clients, and has an outstanding track record in negotiating licenses and favorably settling pending and potential infringement matters, oppositions, cancellations, and litigation. In particular, Tom has been the lead intellectual property attorney for mergers and acquisitions, divestitures and due diligence of companies and their subsidiaries; some of the IP driven acquisitions are in excess of $400 million. He has negotiated and drafted numerous complex agreements relating to the international licensing and joint venture of patents, know-how, and trademarks pertaining to numerous technologies, computer software, and consumer products; several in excess of $60 million.

Understanding the complexities of the rapidly changing global business world, Mr. Tolpin works with hundreds of attorneys throughout the world. He has obtained international patents and trademark registrations in more than 120 countries. He also specializes in developing and protecting patent and trademark portfolios, as well as enforcing and litigating patents and trademarks.

Tom has extensive experience providing clearance and opinion reports pertaining to the validity, enforceability, infringement and clearance of patents and trademarks, and achieves broad protection for his clients.

Tom is experienced in international intellectual property enforcement, trials, and mediation. Tom has not only argued patent cases in the U.S. Court of Appeals for the Federal Circuit, but has also successfully handled patent appeals in the U.S. and European Patent Offices. He has obtained favorable decisions against domain name infringers from both the World Intellectual Property Organization (WIPO) and the National Arbitration Forum (NAF).

Prior to co-founding Tolpin & Partners,, Tom was senior patent attorney for a major petrochemical company (Amoco) for 15 years. During that time, he was responsible for procuring patents, licensing technology, software agreements, legal counseling, enforcing patents, and managing litigation. He worked in the areas of solar energy, semiconductors, oil refineries, gasoline stations, refined and synthetic fuels, engineering plastics, and biotech diagnostic equipment. He was also an equity partner in a large former Chicago intellectual property firm for over 10 years.Tom has been a member of the board of managers of the Intellectual Property Law Association of Chicago, as well as chairman of its trademark committee, patent practices committee, and tax committee.

Tom was a military judge, trial attorney, and lieutenant in the U.S. Navy and has taught business law.

He has lectured on patents, trademarks and licensing.

Admissions
Illinois State Bar
Washington, D.C. Bar
U.S. Patent and Trademark Office
U.S. Supreme Court
U.S. Court of Appeals for the Federal Circuit

Practice Areas
Patents
Trademarks
Domain Names
Software
Copyrights
Licensing Agreements
Mergers & Acquisitions
Litigation

Industries Served
Pharmaceuticals
Chemicals
Food
Electronics Telecommunications
Vehicles
Universities
Financial and Insurance
Software
Entertainment

Education
American University, J.D.
University of Illinois, B.S., Mechanical Engineering
Post graduate courses in chemistry

Memberships/Associations
International Trademark Association (INTA)
Asian Patent Attorneys Association (APAA)
Licensing Executives Society (LES)
Intellectual Property Law Association of Chicago (IPLAC)
American Intellectual Property Law Association (AIPLA)
American Bar Association (ABA)
Chicago Bar Association (CBA)

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