As the chair of Williams Mullen's Patent Prosecution practice and a member of the Intellectual Property section, Tom Bergert counsels clients in all aspects of intellectual property, informing business decisions related to intellectual property procurement, management, assessment, litigation and transactions.

As the chair of Williams Mullen's Patent Prosecution practice and a member of the Intellectual Property section, Tom Bergert counsels clients in all aspects of intellectual property, informing business decisions related to intellectual property procurement, management, assessment, litigation and transactions.

Clients who currently depend upon Tom for their intellectual property needs include software developers, game developers, lottery ticket and system providers, industrial and plumbing equipment providers, hospital and health care system operators, government/defense contractors and suppliers, financial service providers, automotive parts providers, consumer product providers, social media companies, software analytics companies, business method innovators and franchisors.

Tom helps clients with:

  • Strategic patent and trademark portfolio development and counseling,
  • Patent clearance, non-infringement, invalidity and design-around evaluations and opinions,
  • Appeals and other proceedings before respective patent and trademark appellate bodies at the U.S. Patent and Trademark Office
  • Litigation to assert patent, trademark and copyright rights and defend against such assertions by others
  • Post-grant patent challenges
  • IP transactions, including valuation, acquisition and sale of IP assets
  • IP issues related to government contracting
  • Establishing competitor intellectual property monitoring programs,
  • Implementing IP best-practice programs, and
  • Anticipating change based on new legislation and court decisions.

One of Tom’s focus areas is strategic patent portfolio development. He assists clients pursuing domestic and international patent protection for internally developed inventions, as well as those seeking to evaluate and acquire patent assets held by others. In addition, Tom advises companies in the establishment of regular internal procedures to best protect their intellectual assets, preserve long-term value and avoid conflicts with others.

Another of Tom’s focus areas is trademark portfolio management, where he regularly counsels clients on the selection, use and registration of trademarks and service marks. Tom manages the trademark portfolios of dozens of clients, including a Fortune 500 provider of acute and behavioral health care services.

Clients can appreciate Tom’s ability to simplify and clarify complex legal issues. He helps his clients gain industry-specific patent knowledge, which can be valuable in making decisions regarding intellectual property-related protection, transactions, enforcement and defense.