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 companies involved in cybersecurity, artificial intelligence, industrial manufacturing, health care, financial services, financial and Internet technologies, medical devices, drone technologies, geospatial systems, security systems, lottery and gaming technologies, access control systems, government/defense contracting, consumer products and services, craft brewing, social media and data analytics, among other areas.
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 companies involved in cybersecurity, artificial intelligence, industrial manufacturing, health care, financial services, financial and Internet technologies, medical devices, drone technologies, geospatial systems, security systems, lottery and gaming technologies, access control systems, government/defense contracting, consumer products and services, craft brewing, social media and data analytics, among other areas.
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.
- Enforcement of intellectual property rights online.
- 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.
- 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.
Tom has been recognized by Chambers USA for Intellectual Property Law (2017-present). He earned his Juris Doctor degree from the University of Florida Levin College of Law, and his Bachelor of Science degree from the University of Virginia.
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11.30.2023
70 Williams Mullen Attorneys Named to Virginia Business Magazine’s "Legal Elite" for 2023
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08.17.2023
131 Williams Mullen Attorneys Named to 2024 Edition of The Best Lawyers in America®
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06.02.2023
44 Williams Mullen Attorneys, 14 Practice Areas Recognized in Chambers USA 2023
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11.30.2022
65 Williams Mullen Attorneys Named to Virginia Business Magazine’s Legal Elite for 2022
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08.18.2022
123 Williams Mullen Attorneys Listed in 2023 Edition of The Best Lawyers in America©
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06.02.2022
39 Williams Mullen Attorneys, 14 Practice Areas Recognized in Chambers USA 2022
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04.25.2022
Williams Mullen Announces Charlottesville Office Move
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12.02.2021
48 Williams Mullen Attorneys Named to Virginia Business Magazine’s Legal Elite for 2021
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11.18.2021
PODCAST: Five Popular Misconceptions about Patents
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05.26.2021
40 Williams Mullen Attorneys, 12 Practice Areas Recognized in Chambers USA 2021
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04.08.2021
PODCAST: IP Litigation Trends: Are Large IP Litigation Damages Awards Here to Stay? – Part 2
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03.25.2021
PODCAST: IP Litigation Trends: Are Large IP Litigation Damages Awards Here to Stay? – Part 1
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05.29.2020
PODCAST: Intellectual Projects – Dusting off the Idea Files
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04.28.2020
PODCAST: Patent Searching
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04.28.2020
29 Williams Mullen Attorneys, 11 Practice Areas Recognized in Chambers USA 2020
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04.14.2020
PODCAST: Patent Office Secrecy Orders
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04.02.2020
PODCAST: The Timing of Patents
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04.25.2019
30 Williams Mullen Attorneys, 12 Practice Areas Recognized in Chambers USA 2019
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05.03.2018
29 Williams Mullen Attorneys, 12 Practice Areas Recognized in Chambers USA 2018 Guide
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04.18.2018
53 Williams Mullen Attorneys Named to 2018 Virginia Super Lawyers List; 20 Named 2018 Rising Stars
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05.26.2017
32 Williams Mullen Attorneys, 12 Practice Areas Recognized by Chambers USA for 2017
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04.14.2017
54 Williams Mullen Attorneys Named to 2017 Virginia Super Lawyers List; 21 Named 2017 Rising Stars
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02.17.2016
56 Williams Mullen Attorneys Named 2016 Virginia Super Lawyers; 22 Named 2016 Rising Stars
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04.10.2015
Williams Mullen Virginia Attorneys Named 2015 Super Lawyers and Rising Stars
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03.27.2015
Clearing Up the Confusion as to Preclusion: Supreme Court’s Trademark Ruling Gives Deference to the Trademark Trial and Appeal Board (TTAB)
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06.20.2014
Williams Mullen Virginia Attorneys Named 2014 Super Lawyers and Rising Stars
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06.21.2013
Williams Mullen Virginia Attorneys Named 2013 Super Lawyers and Rising Stars