Principal IP Attorney
- Registered attorney in New Jersey only.
- 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.
Trademarks| Of Counsel
- Registered attorney in Washington D.C.
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.
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.