Our Team

Tom Tatonetti

Partner | 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 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. However, 

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

Todd S. Sharinn

Partner | IP Litigation

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

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

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 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.

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