Principal IP Attorney
USPTO Registered, Tom assists clients in patent procurement, portfolio development, and assessing a client’s business needs at every stage of the patent process. Tom has spent a majority of his career representing and writing, prosecuting, and obtaining hundreds of issued patents for Fortune 100 companies.
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. This is mainly 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 nonetheless be done on the outside counsel’s own time.
Tom occasionally leverages the increased availability of data and metrics on patent examiners to help determine the best possible strategy to expeditiously advance prosecution. For example, metrics can indicate that Examiner interviews can advance prosecution even with the toughest of Examiners. For some Examiners, metrics can indicate that filing responses based on reasonable claim scope and legitimate arguments may not overcome a rejection – at least without incorporating unnecessarily narrow claim limitations or appealing.
In addition to patent procurement services, Tom performs freedom-to-operate and due diligence searches as well as provides non-infringement and invalidity opinions.
IP Litigation | of counsel
Erik’s primary area of practice is IP litigation in the fields of patents, trademarks, trade dress, and copyrights. Erik works as part of the team at Tatonetti IP in developing effective strategies and determining the best course of action for a particular case.
Erik has experience with all phases of litigation, including pre-filing investigations up through trial. He has represented clients at the USPTO, including Inter Partes Review (IPR), Ex Parte Examinations, and Trademark Opposition proceedings.
Aside from Tatonetti IP, Erik is serves as an adjunct professor for Media Law at NYU. He worked as an electrical engineer for eight years Columbia University / New York Presbyterian Hospital before attending Brooklyn Law School.
Trademarks| Of Counsel
William serves as of-counsel attorney at the firm. 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.
Filing the trademark application correctly from the start streamlines the trademark process and can save the client time and money.
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 assists in paralegal work, patent and trademark docketing, and office management of the firm. Desiree spent her career working at a larger-sized general practice firm before joining Tatonetti IP. Desiree lives in and works from Texas with her family.