Thomas F. Lebens
“Intellectual property development is about connection, not collection. Planning for these connections starts at the point of idea conception, and is developed throughout the protection process, through the transaction and monetization.”

Thomas F. LebensPartner

San Luis Obispo
100 Cross Street
Suite 203A
P.O. Box 512
San Luis Obispo, CA 93406VCard
805.548.1800 
805.980.3483 fax
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Education

J.D., University of San Diego, 1993, cum laude
B.S., Electrical Engineering, California Polytechnic State University, 1989

Services

Technical Areas

Bar & Court Admissions

CaliforniaU.S. Patent and Trademark OfficeCalifornia Supreme CourtU.S. Court of Appeals for the Federal CircuitU.S. Court of Appeals for the Ninth CircuitNumerous U.S. District Courts

Thomas F. Lebens is an experienced attorney-at-law and patent attorney who has served clients since 1991 in preparing and prosecuting patent and trademark applications, including appeals, post-grant review and interferences. In addition to his law practice, Tom currently manages West Coast operations for Fitch Even’s San Diego, Los Angeles, and San Luis Obispo offices and chairs the firm’s Marketing Committee.

Tom has handled sophisticated, high-stakes patents across a wide spectrum of technologies and industries, including these:

  • Analog and digital electronics
  • Optics
  • Control systems
  • Communications, including cellular telephony and satellite communications and design
  • Semiconductor fabrication
  • Circuit design
  • Physics
  • Medical devices, implants and imaging
  • Consumer electronics, including television technologies and optical video technologies
  • Materials and contraband detection and imagery
  • Weaponry, both lethal and nonlethal
  • Complex computer software technologies, including data compression and encryption, database design, computer security, intruder detection, software design tools, and Internet technologies
  • Business methods, such as software and business processes


In addition, Tom is highly experienced in counseling clients in intellectual property and business strategy; licensing issues; infringement and validity analysis; patentability, infringement, and validity opinions; and copyright matters, both for artistic works and computer software.

Tom has an integrated approach to a business’s intellectual property that spans the lifetime of its assets. Clients value Tom’s involvement from the concept stage all the way to leveraging the asset through sale, licensing, pooling, partnering, and product/service delivery and market management.

He helps clients focus on IP-rich technology segments, developing an intellectual property portfolio aligned with those technology segments and targeted to strategic profit opportunities.

Thanks to Tom’s approach, clients better understand their competition, positioning their intellectual property portfolio accordingly, both as potential business partners and as adversaries. And, when it comes time to create and close a deal, his experience, creativity, and competitive spirit come into play.



Represents innovation-driven client in creation and development of patent portfolio, and sale of portfolio to industry leader in smartphone technology.

Represents global consumer electronics and telecommunications company in creation and development of top-10 U.S. and international patent portfolio.

Developed patent portfolio for media post-production company in execution of licensing and product protection strategy.

Leads team in offensive and defensive post-grant review proceedings for various weapon systems in executing business and patent strategies leading to successful outcomes, including mergers/purchases, licensing, and enforcement.

Experienced in patent pre-appeals, appeals, and advanced tactics for a Fortune 500 company in difficult patent prosecution cases in the consumer electronics, telecommunications, and software industries to maximize protection and business value of patent application assets.

Conducts due diligence in connection with purchase of patent assets covering media technologies, leading to improved negotiating conditions, and understanding of limitations and encumbrances.

Prepares and prosecutes hundreds of patent applications and trademark applications ranging in technologies from complex physics, telecommunications, and electronics to software algorithms, user interfaces, and data processing.

Negotiates and drafts numerous licensing, sale, joint development, and business agreements with Fortune 500 companies and non-practicing entities on behalf of small and mid-cap clients.

  • “Trade Secret Implications of the America Invents Act: Can the Coca-Cola® Formula Now Be Patented?” Fitch, Even, Tabin & Flannery Webinar, March 20, 2014.
  • American Intellectual Property Law Association
    • Trade Secret Law Committee
      • Co-Chair, Cybersecurity and Privacy Subcommittee
     
  • American Youth Soccer Organization
    • Past Member, National Board of Directors
    • Past Area Director & Regional Commissioner
    • Past Chair, National Legal Commission
  • Boy Scout Troop 413, Arroyo Grande
    • Scoutmaster
  • Cal Poly Alumni Association, San Luis Obispo
    • Past President
    • Member, Board of Directors
     
  • Cal Poly’s Center for Innovation & Entrepreneurship
  • Cal Poly College of Engineering
    • Dean’s Advisory Council
  • Cal Poly Corporation
    • Member, Board of Directors
  • Central Coast Natural History Association
    • Past President, Board of Directors
  • Institute of Electrical and Electronics Engineers
  • Prado Day Center
    • Past Member, Board of Directors
  • San Luis Obispo Chamber of Commerce
    • Past Chair, Board of Directors
    • Member and Past Chair, Technology Advocacy Committee
  • San Luis Obispo County Bar Association
    • Chair, Intellectual Property Section
  • San Luis Obispo Literacy Council
    • Past Member, Board of Directors
  • Softec, Central Coast Software and Technology Association
    • Director Emeritus
    • Past Chair, High Technology Companies Symposium

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