Meet Our Team
Principal IP Attorney
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 leverages the increased availability of data and metrics on patent examiners for each individual case to help determine the best possible strategy to expeditiously advance prosecution. For example, metrics often 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 such situations, an early determination to appeal, abandon, request supervisory oversight, etc., can save the client thousands in legal and USPTO fees – for that one case alone.
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.
Of Counsel (Trademarks)
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.
Matt is founding partner of MG Miller where he manages the firm’s intellectual property practice. He helps his clients advance their business goals by working with them to create, develop, and subsequently leverage their intellectual property portfolios.
Using his expertise in both domestic and international patent prosecution, Matt has obtained patents in a wide variety of technical fields. Matt has experience helping his clients navigate the (no longer) murky waters of U.S. software patents, particularly in the field of machine learning and artificial intelligence. He also has experience working with 3D printing companies, artists, musicians, and creators from many other walks of life.
Matt is one of the few true subject matter experts when it comes to the intersection of intellectual property, cannabis, and hemp. Matt has spoken at industry conventions such as NECANN and CannaCon several times, and was part of an industry panel at the first hemp entrepreneurship event at Rutgers University. Since entering the industry two/three years ago, Matt has regularly obtained federal trademarks on behalf of his clients (when appropriate) in the cannabis/hemp sphere.
Janie assists in paralegal work, patent and trademark docketing, and office management of the firm. Janie has spent most of her career at larger firms, during which time she managed United States and foreign deadlines for trademark portfolios.