Tom Tatonetti
Partner | IP Attorney
Tom specializes in providing patent preparation and prosecution services for companies looking to enhance the quality of and make their patents more valuable and threatening to competitors. For example, this can be done by providing vibrant and detailed drawings that tell the inventor’s story and crafting varying-scoped independent claims to enhance the patent’s breadth.
Tom provides personalized services to clients by fundamentally understanding the client’s products, their competitors’ products, and the company’s future direction. Such an understanding takes time to acquire but should occasionally be done on the outside counsel’s own time. Furthermore, Tom occasionally works on landscape searches and whitespace projects for clients that are looking to stay ahead of the curve and prevent the “leading from behind” conundrum. Tom teams up with searching companies and collaborates with the in-house team to come up with a searching strategy that can be leveraged short- and long-term.
Tom occasionally leverages the increased availability of data and metrics on patent examiners to help determine the best possible strategy to expeditiously advance prosecution.
In addition to patent procurement services, Tom performs freedom-to-operate and due diligence searches as well as provides non-infringement and invalidity opinions.
Education
Benjamin N. Cardozo School of Law, J.D., cum laude
St. Josephs’ College, NY, B.S., Computer Information Systems
Bar Admissions
New Jersey
USPTO, Reg. No. 73,779
Charles Shull
ASSOCIATE | PATENT ATTORNEY
Charles is an inventor himself and is dedicated to helping clients bring their inventions to life. Charles has worked with large companies, like CNH Industrial, Rolls Royce Power, Bridgestone, and Voith, midsize companies, startups, and solo inventors from around the world.
Charles’s practice area’s include Mechanical and electro-mechanical systems, including vehicles, autonomous and semi-autonomous vehicle control systems, industrial machines, including paper making machines, agricultural vehicles and equipment, hydrodynamic retarders, and generators. Medical devices and implants, including surgical tools, bone fixation devices, cancer treatment devices, and acetabular prostheses. Distributed Ledger Technologies (DLT), including blockchain-based control systems, IoT smart contracts, web3, and web4. Weapon systems and platforms, including firearms, projectiles, optics, and thermal targets. Manufactured materials, including 3D-printing systems, display screens, various glass composites, and polymer composites such as seals and gaskets
Education
Benjamin N. Cardozo School of Law – Yeshiva University, J.D., 2016
Oral Roberts University, B.S. Mechanical Engineering, summa cum laude, 2013
Bar Admissions
Indiana, 2017
U.S. Patent and Trademark Office (Reg. No. 74,065), 2015,
Erik Dykema
ASSOCIATE | PATENT ATTORNEY
Erik Dykema’s main field of practice is intellectual property litigation. Erik has significant experience in patent litigation involving cellphone handsets, computer networking, integrated circuit design, CPU architecture, automobile design, and marine technology. Erik also has extensive experience with wireless standards essential patents and technology such as those relating to 3GPP, Bluetooth, and Wifi.
Erik has been involved in the litigation of dozens of patents, with experience in all phases of patent litigation from initial filing through pre-trial preparation, in the District Courts, at the Federal Circuit, at the Patent Trials and Appeals Board, and before the US International Trade Commission.
In addition to intellectual property disputes, Mr. Dykema has worked on commercial litigation for both international and domestic corporations, litigating cases in binding arbitration, and before state and federal courts, involving class action complaints, trade secrets, trademarks, business ownership, fraud, development outsourcing litigation. Mr. Dykema also regularly prosecutes trademarks and appears before the USPTO Trademark Trials and Appeals Board.
Prior to attending law school, Mr. Dykema worked for eight years as an electronics engineer and programmer at Columbia University / New York Presbyterian Hospital. During that time he designed and implemented devices to measure, record, store, and display patient information (e.g. electroencephalogram readings) permitting the remote review of such information by medical staff.
Education
J.D., cum laude, Brooklyn Law School | 2010
B.S. in Electrical and Computer Engineering, Carnegie Mellon University | 2000
Bar Admissions
New York
New Jersey
U.S. Court of Appeals for the Federal Circuit
U.S. District Court for the Eastern District of Texas
U.S. District Courts for the Eastern and Southern Districts of New York
U.S. District Court for the District of New Jersey
Joy Goudie
ASSOCIATE | PATENT ATTORNEY
Education
⦁ Pace University (JD) 1998 Long Island University (MS, Chemistry) 1995 ⦁ Mercy College (BS, Medical Technology, Behavioral Science, Health Service Management) 1990
Bar Admissions
New YorkUSPTO
William Goldman
Trademarks| Of Counsel
William serves as of-counsel attorney at the firm, and primarily aids the firm in Trademark Opposition matters at the USPTO. William provides client counseling on trademarks, copyrights, and litigation. He regularly performs trademark searches and provides opinions on likelihood of confusion (2(d)) refusals among other areas of law.
William’s goal in filing a client’s trademark is to file the application right the first time to expedite the time to allowance and avoid receiving unnecessary Office Actions.
Education
George Washington Law School, LLM
Pennsylvania State Dickinson Law, J.D.
Oberlin College, B.A.
Bar Admissions
Washington D.C.
Sudi Narasimhan
Technical advisor
Sudi Narasimhan is a seasoned professional who has experience across several industries with
expertise in chemical and material science applications.
Sudi focuses on procuring patents in the chemistry and biotechnology space. He has worked with Fortune 50
companies to small organizations, and in the USA and internationally.
He holds a B.S in Mechanical Engineering from The Johns Hopkins University and a Masters in
Mechanical and Aerospace Engineering from the University of Virginia
Desiree Rouse
Paralegal/Office Assistant
Desiree is an experienced paralegal who helps serve the firm’s clients in U.S. and international patent and trademark work. Desiree works with attorneys whose practices encompass the areas of patent, trademark, and copyright law. Her responsibilities include preparing U.S. and foreign patent application documents, preparing trademark applications, docketing maintenance, handling maintenance fee payments for U.S. patents and annuities for foreign patents, and handling research projects relating to all aspects of intellectual property law. Desiree also manages the firm’s administrative, technical, and accounting support tasks.
Desiree’s education centers around paralegal and legal studies. She holds honors with the Criminal Justice Honor Society. Desiree also spent time interning with the state of Colorado as a paralegal before graduating.
Desiree currently resides in Texas with her family.
Education
Front Range Community College, A.A.S., Paralegal Studies, 2010
Metropolitan State University, B.S., Criminology/Legal Studies, Alpha Phi Sigma, 2017
Contact Tatonetti IP
Peter Borghetti
Associate | Patent Attorney
Peter is a registered patent attorney that leverages his degrees in Aerospace Engineering and Computer Information Systems to work on a handful of technical areas. Peter has experience both as outside counsel and in-house counsel to IP departments, which helps him understand the client’s needs from both vantage points.
Education
Massachusetts School of Law, Andover, MA, J.D.
Northeastern University, MA, MS, Computer Information Systems
The Pennsylvania State University, B.S., Aerospace Engineering
Bar Admissions
Massachussetts
Pennsylvania
Washington D.C.
USPTO, Reg. No. 42,345
Todd S. Sharinn
ASSOCIATE | PATENT ATTORNEY
Mr. Sharinn heads our Intellectual Property Litigation Group.
Mr. Sharinn’s practice involves the worldwide registration, management, commercialization and enforcement of intellectual property rights. He works closely with his clients to develop local and global branding strategies, as well as create programs to police and enforce their brands’ underlying patents, trademarks, trade dress, product configurations, copyrighted works, trade secrets and advertising efforts.
Mr. Sharinn has successfully litigated more than one hundred patent, trademark and copyright infringement matters in several domestic and foreign jurisdictions. In this regard, he has worked with the United States Customs Service (both I.C.E. and Homeland Security), the United States Federal Bureau of Investigation, the United States Treasury Department, the United States Alcohol, Tobacco and Firearms Agency, Interpol, the World Intellectual Property Organization and numerous local law enforcement agencies (within the United States and throughout the World) in connection with the thwarting of illicit trade including smuggling, parallel imports and the manufacture and sale of counterfeit goods, as well as the freezing and seizure of assets derived from such illegal activities.
Mr. Sharinn is registered with the United States Patent and Trademark Office. Much of his patent work is directed to the litigation and licensing of patents relating to, among other things, pharmaceuticals, medical devices, electronics, cosmetics, heavy machinery and consumer goods.
In addition, Mr. Sharinn has considerable experience with representing entities and individuals in the sports and entertainment industries. Specifically, he represents professional athletic leagues and teams, as well as media companies, producers and distributors. Mr. Sharinn has lectured extensively within the legal community and before industry groups, law schools, and business management programs. He is also widely published.
Mr. Sharinn is a member of the International Trademark Association’s Anti-Counterfeiting Committee, the Bar Association for the City of New York (Sports Law Executive Committee) and the Sports Lawyers Association. He is a former chair of the Continuing Legal Education Web-Committee, and a former chairman of the Sports & Entertainment Section of the Connecticut Bar Association. Mr. Sharinn is a former member of the Technology Transfer Executive Committee of Connecticut United for Research Excellence, Inc. (“CURE”), former member of the Board of Directors and former chief legal officer of Camp Compass, Inc.
Mr. Sharinn enjoys surfing, playing ice hockey and spending time with his family. He is the head coach for Staples High School’s Varsity Ice Hockey Program and formerly served as the assistant head coach for Westhill HIgh School’s Varsity Ice Hockey Program, head coach and director of player personnel for the Columbus Cottonmouths Professional Ice Hockey Club, Inc. of the Central Hockey League, assistant coach with the Baltimore Bandits Professional Ice Hockey Club of the American Hockey League, head coach of the Men’s Varsity Ice Hockey Program, faculty advisor for student-athlete mentoring, and assistant strength and conditioning coach at Villanova University, and assistant coach of the Yale University’s Varsity Ice Hockey Program, as well as a member of the U.S.A. Hockey’s New England Regional Selection Committee. He was also responsible for forming California’s first all women’s state high school aged all star ice hockey team.
Education
Benjamin N. Cardozo School of Law, J.D.
Boston University,M.A., Molecular Biology, cum laude
Boston University, B.A., Biology, cum laude
Bar Admissions
Connecticut
New York
Massachusetts
Pennsylvania
United States District Court for the Eastern, Southern and Northern Districts of New York
United States District Court, District of Connecticut
United States Court of Appeals for the Second and Federal Circuits
