Tom Donovan advises on patent and trademark litigation and prosecution, unfair competition and trade secret litigation, as well as a variety of licensing-related matters. Regardless of the client or the complexity of the matter at hand, Tom provides his clients with the guidance they need, in a way they can understand and apply to their daily business operations.
Tom’s technical depth means he quickly understands even the most sophisticated innovation, allowing him to focus on writing patents that are both viable and enforceable.
Tom also has significant negotiation and drafting experience with software licensing, as well as patent, trademark and copyright licensing, and in rendering patent validity and infringement opinions. Tom is valued by clients and colleagues for his grasp of the nuances of different types of licensing transactions. He delivers wide experience in negotiating with deal constituents in order to effectively close transactions while incorporating his client’s underlying objectives.
In the event a dispute arises, Tom aggressively defends clients not only by protecting their IP assets, but also by mitigating potential loss and maximizing their potential for recovery. Tom is skilled in litigating IP disputes in federal and appellate courts and in alternative dispute resolution forums, and in advocating client positions before the U.S. Patent and Trademark Office (USPTO), Trademark Trial and Appeal Board, (TTAB) and International Trade Commission (ITC). He is experienced in both prosecution and defense, from initial pre-suit investigation through conclusion.
Tom also has experience in national and international compliance, and is a member of the core team assisting the Special Compliance Coordinator appointed by the U.S. Department of Commerce to monitor, assess and report on the U.S. export control compliance of Zhongxing Telecommunications Equipment Corporation, of Shenzhen, China, and ZTE Kangxun Telecommunications Ltd. of Hi-New Shenzhen, China (collectively, ZTE).
Tom represents companies involved in a wide variety of industries, ranging from manufacturing to technology and software. His tech experience includes advising businesses involved in the development, manufacture and marketing of plastics and packaging, exercise equipment and other health and fitness products, financial clearing software, products used in the manufacture of semiconductors, battery components, and beverage dispensing equipment and other food service equipment.
In addition, Tom is familiar with high performance racing components used in NASCAR, Formula 1 and other racing, sports marketing, packaging and other industrial equipment, as well as a wide range of consumer goods, automotive and aerospace parts and equipment. He also represents clients in the entertainment and advertising industries.
Tom is a former member of the firm’s Management Committee and former chair of the Intellectual Property department.
Professional and Community Involvement
Member and former alumni advisory board president, Department of Mechanical
Science and Engineering at the University of Illinois
Adjunct faculty member, Chicago-Kent College of Law
Guest lecturer, University of Notre Dame
Member, Intellectual Property Law360 Editorial Advisory Board
Member, PTAB Bar Association
Member, International Trademark Association (INTA)
The Best Lawyers in America 2012-2020
Illinois Super Lawyers, 2006-2019
Leading Lawyers Network
Intellectual Property Law Society, Alumni Awards, 2012
Managing Intellectual Property IP Stars, Patent and Trademark star – Illinois, 2019