Thomas W. Tolpin2019-09-12T20:31:39+00:00

Thomas W. Tolpin

Thomas Tolpin has over 40 years of experience in intellectual property (IP) law. In 2008 he co-founded Tolpin & Partners, P.C., a full service IP law firm which efficiently and inexpensively provides for complex and routine IP matters. For decades, Tom has maintained an outstanding record for counseling clients in IP matters. From patent prosecution to trial strategy, Tom creates innovative solutions and strategies tailored to the needs of his clients. He counsels clients in increasing the scope and protection of patents and trademarks, as well as the acquisition of IP assets.

Prior to co-founding Tolpin & Partners, Tom was senior patent attorney for a major petrochemical company (Amoco, predecessor to BP) for 15 years. During his time at Amoco, he was responsible for procuring patents, licensing technology, negotiating software agreements, providing legal counseling, enforcing patents, and managing litigation. After his 15 years at Amoco, he became an equity partner of a mid-size former Chicago IP firm for a decade. As an equity partner in private practice he worked in the areas of solar energy, semiconductors, oil refineries, gasoline stations, refined and synthetic fuels, engineering plastics, and biotech diagnostic equipment. 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 practices patent law in all areas of technology and has extensive experience in counseling clients on enforcement, trial strategy and risk management in view of business objectives, and he 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 IP attorney for mergers and acquisitions, divestitures and due diligence of companies and their subsidiaries; including IP driven acquisitions with a value 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; including several agreements with a value of $60 million.

Tom understands the complexities of the rapidly changing global business environment and 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 he achieves broad protection for his clients. He is also experienced in IP property enforcement, trials, and mediation. He 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).

In addition, Tom has lectured on patents, trademarks and licensing, was a military judge, trial attorney, and lieutenant in the U.S. Navy, and has taught business law.

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)