“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.”
|San Luis Obispo|
By appointment only|
102 Cross Street
San Luis Obispo, CA 93401VCard
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.
Tom has handled sophisticated, high-stakes patents across a wide spectrum of technologies and industries, including these:
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.
As a part of his integrated approach, Tom regularly assists clients in developing policies and drafting agreements related to their intellectual property and information, including drafting non-disclosure agreements, license agreements, customer terms and conditions, intellectual property notices, office and data access policies, joint development agreements, employee and independent contractor agreements, website disclaimers, privacy policies, and notices, website policies and notices, and privacy law compliance policies and practices.
Tom is a member of Fitch Even's Business Development Committee.
Successfully represented patent owner in several inter partes review and covered business method review proceedings, resulting in all claims surviving validity challenges.
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.