Thomas L. Irving has more than 40 years of experience in the field of intellectual property law. His practice includes America Invents Act (AIA) post-grant proceedings, due diligence, counseling, patent prosecution, and reissue and reexamination.
He counsels clients on a wide range of mainly pharmaceutical matters, including pre-litigation, Orange Book listings of patents covering FDA-approved drugs, infringement issues, enforceability and validity analysis.
A significant portion of Tom’s current practice is focused on AIA post-grant proceedings, including how to enhance the strength of patents in the pharmaceutical space to protect against post-grant challenges.
He has served as lead counsel in numerous patent interferences, reissues, and reexaminations; as counsel in numerous AIA post-grant proceedings; and as an expert witness in patent litigation. Tom directed the preparation of two highly complex IPRs for possible use in settling litigation.
Tom has been extensively involved in counseling, due diligence, prosecution and prelitigation for matters involving major drugs such as Kalydeco®, Orkambi®, Aloxi®, Tecfidera®, Lorcaserin®, Pulmicort® Respules®, Taxotere®, Eloxatin®, Lantus®, Crestor®, Targretin®, Brilinta®, Halaven®, Allegra®, Apidra®, Epiduo Gel®, Rilutek®, Ramipril®, Jakafi®, Duexis®, Viracept®, and other drugs such as Rimonabant®, VX-661, and HMPL 0004®, in clinical trials prior to FDA approval.
He successfully reissued the patent for the low molecular weight heparin drug, Lovenox®, a blockbuster product. For more than 25 years, Tom has served as principal teacher of the Patent Resources Group (PRG) Chemical Patent Practice course, a comprehensive course on U.S. chemical patent law taught twice a year; he coauthors the multi-volume treatise used in the course.
He originated PRG’s Orange Book and Due Diligence courses, which help prepare patent owners, through effective application drafting and prosecution, to withstand the rigors of AIA’s inter partes review (IPR) and post-grant review (PGR).
He presents analyses of U.S. Court of Appeals for the Federal Circuit patent decisions for many state bar association groups and has spoken at numerous national trade and bar association meetings such as the Intellectual Property Owners Association, American Intellectual Property Law Association (AIPLA), and American Bar Association.
Tom has lectured at many law schools in both the United States and China, and at the Patent Office of the State Intellectual Property Office (SIPO) of the People’s Republic of China. He has participated in multiple Strafford Webinars on patent law topics, including several that deal with AIA post-grant proceedings.
Over the years, Tom has been recognized by Intellectual Asset Management as a leading patent prosecutor in the D.C. area, and nationally for post-grant procedures. The Legal 500 U.S. recognized him for patent portfolio management and licensing.
Tom was inducted into the LMG Life Sciences Hall of Fame and recognized as the Patent Strategy & Management Attorney of the Year: District of Columbia. Tom opened the firm’s first European office in Brussels in 1993.
- Duke University School of Law J.D., 1977
- University of Utah B.A., Chemistry, magna cum laude, 1974
- District of Columbia
- U.S. Court of Appeals, Federal Circuit
- U.S. Patent and Trademark Office
Professional Activities :
- AIPLA (chair of Chemical Practice Committee, 1991, 1991-1991; member of Board of Directors, 1992-1994)
- Institute of Intellectual Property and Social Justice (co-chair, 2008-present; founding board member of Howard Intellectual Property Program, 2015-present)
Rate : $$$