Thomas Otterlee Photo

Thomas J. Otterlee

Partner

Overview

Tom is known for his systematic approach to patent portfolio management, as well as patent development and prosecution. His particular focus is on utility and design patents for mechanical and electrical devices including turbines, compressors, electric motors, and heat exchangers.

Clients appreciate Tom’s direct approach to developing effective patent strategies. His U.S. experience includes:

  • Execution of focused patent searches
  • Provision of patentability and clearance opinions
  • Drafting of patent applications
  • Preparing licensing and other agreements

Tom also works closely with international patent counsel, enabling cost-effective and efficient prosecution of clients’ patent applications in China, Canada, Mexico, and the European Union.

 

Additionally, Tom’s practice includes counseling clients with respect to the enforcement of their patents and the avoidance of their competitor’s patents. In this regard, he has prepared opinion letters arguing non-infringement and invalidity of competitors’ patents.

Tom also provides drafting and pre-development analysis services for intellectual property agreements in areas such as licensing, confidentiality, non-disclosure and joint development.

Prior to joining the firm, Tom worked for 12 years in the power generation industry including several years as the manager of the service engineering group of a large original equipment manufacturer.

Experience

Assessing a client’s patent portfolio

When Tom recognized that an energy industry client’s large patent portfolio had become costly (the client was paying for patents and was prosecuting patents that were no longer valuable), he developed a systematic process to evaluate the client’s patents. Tom’s team summarized each patent application during prosecution or prior to paying maintenance fees and applied a standard criteria to assess the value of the property to determine if it was worth the continued “spend.” Properties deemed not worth the spend were abandoned to allow the client to focus its resources on valuable properties, resulting in significant savings for the client.

In-depth patent clearance investigation 

Tom’s team performs key word and focused assignee searches to gather the art within a particular technological area and evaluate that art against the clients proposed design. If a potential infringement risk is discovered, Tom works with the client to redesign the product if possible or performs further searching and analysis to establish a non-infringement or invalidity position.

Professional Activities

  • Member, Board of Directors, State Bar of Wisconsin, Intellectual Property Law Section
  • Yellow Belt Certified, Legal Lean Sigma

Education

Admissions

Community Involvement

  • Member, Vice President, Board of Governors, Legend at Brandybrook
  • Chairman, Junior Golf Committee, Legend at Brandybrook
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