Thomas Kelton focuses his practice on intellectual property matters, including procurement of patents, trademarks, and copyrights, as well as licensing intellectual property in corporate matters. He listens to clients to understand their specific intellectual property needs, devising appropriate strategies to best protect their valuable property. Thomas strives to achieve the most comprehensive and defendable intellectual property rights for his clients. He also represents both patent owners and third party requesters in reexaminations of patents.
Before joining the firm, Thomas practiced intellectual property law for seven years at another large, national firm. Thomas is active in the Knights of Columbus, Council 799, where he has been an officer since 2006.
In addition to his law degree, Thomas holds a B.S. in electrical engineering.
- Preparing and prosecuting domestic and international patents in the radio frequency, telephony, micro-electronics, electronic commerce, computer, optics, antenna, radar, and hydrocarbon production arts
- Conducting an interference proceeding in the USPTO, including putting on the case in chief and drafting motions, for determination of inventorship for advanced security technology
- Conducting both ex parte and inter partes reexamination proceedings in the USPTO for highly contested patents covering fundamental communications technology and highly commercially successful technology
- Participating in due diligence projects in association with corporate mergers and deal structuring, including the transfer of a large patent portfolio
- Drafting technology licenses, technology transfer agreements, and secured debt agreements in the fields of communications, electronic commerce, software development, and banking
- Performing validity and infringement analysis for complex electrical and software cases
Recent Publications and Speeches
- Author, "Evolution of Patent-Eligible Subject Matter After Bilski," Intellectual Property Today, May 2011.
- Co-author with Huyen Luong, "On-Sale Bar Issues Arising in the Representation of R&D Labs," Intellectual Property Today, January 2010.
- Co-author with David Tannenbaum, Ross Viguet, and Nate Rees, "Reexaminations - Fertile Ground in the Changing Landscape of Patent Law: Advantages and Pitfalls for Third Party Requesters, Patent Owners, and Counsel," Intellectual Property Counselor, November 2009.
- Co-author with David Tannenbaum, Ross Viguet, and Nate Rees, "Reexaminations - Fertile Ground in the Changing Landscape of Patent Law: Advantages and Pitfalls for Third Party Requesters, Patent Owners, and Counsel," Bloomberg Law Reports, July 2009.
- "Policy Considerations Behind Post-Grant Oppositions," Texas Intellectual Property Law Journal IP Symposium, Austin, Texas, 2007.
05/25/2011 - Evolution of Patent-Eligible Subject Matter After Bilski
In June 2010, the Supreme Court issued its long-awaited decision regarding patent-eligibility for process claims under 35 U.S.C. § 101. See Bilski v. Kappos
, 561 U.S. ___ (2010). Two recent Federal Circuit decisions indicate that the Bilski
decision will be interpreted to provide broad, but not unlimited, patent-eligibility in the computer and healthcare arts.
12/17/2010 - FLASH - Supreme Court Does Not Answer Copyright Exhaustion Question in Costco
Earlier this week, the U.S. Supreme Court issued a split decision and failed to resolve whether copyrighted materials legally made abroad can be imported into the U.S. and sold without the express permission of the copyright owner.