Tom Bergert is a member of the firm’s intellectual property section and a registered patent attorney. He counsels clients in all aspects of intellectual property, informing business decisions related to intellectual property procurement, management, assessment, litigation and transactions.
His background includes substantial experience advising clients on patent issues in the software, gaming, lottery, Internet, consumer product and defense technology fields. His work includes product clearance/freedom-to-operate evaluations, infringement/validity/design-around studies, reexamination proceedings, patent prosecution, due diligence reviews and intellectual property licensing, among other areas. On behalf of his clients, he participates in appeals and other proceedings before respective patent and trademark appellate bodies at the U.S. Patent and Trademark Office. He also represents clients in a variety of intellectual property litigation matters, where he helps clients assert patent, trademark and copyright rights and defend against such assertions by others. In addition, Mr. Bergert has led negotiations and drafting of intellectual property agreements for public-private partnerships seeking to advance research and commercialization efforts for specific technologies.
Tom Bergert is a member of the firm’s intellectual property section and a registered patent attorney. He counsels clients in all aspects of intellectual property, informing business decisions related to intellectual property procurement, management, assessment, litigation and transactions.
His background includes substantial experience advising clients on patent issues in the software, gaming, lottery, Internet, consumer product and defense technology fields. His work includes product clearance/freedom-to-operate evaluations, infringement/validity/design-around studies, reexamination proceedings, patent prosecution, due diligence reviews and intellectual property licensing, among other areas. On behalf of his clients, he participates in appeals and other proceedings before respective patent and trademark appellate bodies at the U.S. Patent and Trademark Office. He also represents clients in a variety of intellectual property litigation matters, where he helps clients assert patent, trademark and copyright rights and defend against such assertions by others. In addition, Mr. Bergert has led negotiations and drafting of intellectual property agreements for public-private partnerships seeking to advance research and commercialization efforts for specific technologies.
One of Mr. Bergert’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, Mr. Bergert 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 Mr. Bergert’s focus areas is trademark portfolio management, where he regularly counsels clients on the selection, use and registration of trademarks and service marks. Mr. Bergert manages the trademark portfolios of dozens of clients, including a Fortune 500 provider of acute and behavioral health care services.
Mr. Bergert is a member of the Virginia State Bar. He is also admitted to practice in Florida and before the U.S. Court of Appeals for the Federal Circuit. In addition, he is registered to practice before the U.S. Patent and Trademark Office and is a member of the American Intellectual Property Law Association. Mr. Bergert has been selected on multiple occasions as one of Virginia’s “Legal Elite” in intellectual property by Virginia Business magazine. In 2010, Washington SmartCEO magazine named Mr. Bergert among its “Legal Elite” for intellectual property in the Washington, D.C. area. Martindale Hubbell has rated Mr. Bergert an AV attorney, its highest rating available.
Mr. Bergert received his law degree in 1993 from the University of Florida College of Law in Gainesville, Fla. He earned a bachelor’s degree in systems engineering in 1990 from the University of Virginia.