Thomas F. Bergert
Clients turn to Tom Bergert for strategic and practical guidance on patent and trademark portfolio development and enforcement to support intellectual property (IP) value creation and long-term business growth. As chair of the firm’s Patent Prosecution practice, Tom helps companies protect inventions domestically and internationally to meet commercial objectives and enhance competitive positioning.
Tom advises emerging growth companies, middle-market businesses, and established enterprises across technology-driven industries, including cybersecurity, artificial intelligence (AI), industrial manufacturing, health care and medical devices, financial and internet technologies, firearms/weapons, drone and geospatial systems, software systems, access control and security technologies, government and defense contracting, machinery engineering, consumer products, and data analytics.
Beyond securing U.S. and international patent protection for clients, Tom regularly counsels clients on patent clearance/freedom-to-operate (FTO), non-infringement, invalidity, and design-around strategies, as well as in the acquisition, licensing, and divestiture of IP assets. Tom regularly represents clients in appeals and other matters before the U.S. Patent and Trademark Office (USPTO).
Tom also advises on trademark selection, clearance, registration, enforcement, and portfolio management, representing clients in various consumer-facing industries including healthcare, education, logistics, shipping/delivery, restaurants/breweries and others in the hospitality industry. He further counsel clients in IP litigation involving patent, trademark, and copyright disputes, including online brand protection, IP enforcement, and IP issues arising in regulated industries and government contracting.
Additional areas of focus include IP transactions and valuation, competitive IP monitoring programs, implementation of IP best-practice policies, and proactive counseling on the impact of new legislation, USPTO rules, and federal court decisions.
Clients value Tom’s ability to translate complex IP law and patent strategy issues into clear, actionable business advice that supports informed decisions around IP protection, commercialization, enforcement, and defense.
Tom is recognized by Chambers USA for Intellectual Property Law (2017–present). He earned his Juris Doctor from the University of Florida Levin College of Law and his Bachelor of Science from the University of Virginia. He is also a co-leader and frequent contributor to Williams Mullen’s IP podcast, Trending Now, where he discusses current developments in patent law, emerging technologies, and IP strategy.
- University of Florida Levin College of Law (J.D.)
- University of Virginia (B.S.)
- Omega Rho
- International Honor Society
Professional Affiliations
- American Intellectual Property Law Association
Bar Admissions
- Florida Bar
- U.S. Patent and Trademark Office
- Virginia State Bar
Court Admissions
- U.S. Court of Appeals for the Federal Circuit
AV-Rated by Martindale-Hubbell
Chambers USA – Intellectual Property (2017-present)
Listed in Virginia Super Lawyers magazine (2013-2018)
Virginia Business – "Legal Elite" (2006, 2007, 2008, 2012, 2021, 2022 - present)
Named in Washington SmartCEO magazine's "Legal Elite" (2010)
The Best Lawyers in America® - Litigation - Intellectual Property (2023-present), Patent Law (2024-present)
Experience
- Serve as IP counsel to a provider of artificial intelligence (AI) software solutions, including software for operating stochastic neural networks. Representation includes managing a developing portfolio of patent rights and advising client on various patent issues.
- Serve as IP counsel for a research and development company providing solutions to aerospace and healthcare challenges. Representation includes preparing and prosecuting patent applications, managing a developing portfolio of domestic patents and patent applications, and advising client on issues involving government contracting and IP rights.
- Serve as IP counsel for a developer of access control technologies and provider of related services. Representation includes preparing and prosecuting patent applications, managing a developing portfolio of domestic and international patents and patent applications, and advising client on outside party patent rights, including non-infringement, invalidity and design-around issues.
- Serve as IP counsel to a provider of solutions to detect dust accumulation hazards in industrial, solar and other environments. Representation includes managing a developing portfolio of domestic and international patents and patent applications, and advising client on outside party patent rights, including non-infringement, invalidity and design-around issues.
- Serve as IP counsel to a manufacturer and licensor of various quick-connect fitting technologies for plumbing, electrical and other applications. Representation includes preparing and prosecuting patent applications, managing a portfolio of over 150 domestic and international patents and patent applications, and advising client on outside party patent rights, including non-infringement, invalidity and design-around issues.
- Serve as IP counsel to a U.S. government contractor and systems integrator providing products and services to the U.S. government and various contracting entities. Representation includes preparing and prosecuting patent applications and advising client on issues involving government contracting and IP rights, including patent protection for a modular power supply system and device for use in a variety of mobile and tactical situations.
- Serves as U.S. patent counsel to an international provider of 3D printing and other solutions, filing and prosecuting U.S. patent applications as part of an expanding patent portfolio.
“My advice to anyone in need of thoughtful, practical and expert legal intellectual property guidance is that Tom Bergert needs to be at the top of their list.”
— Williams Mullen Client Feedback - Chambers USA, 2024
