Tom’s biotechnology experience, gained from both an extensive in-house career as the director of intellectual property for a biopharmaceutical company and from private practice, allows him to help his clients with their complex intellectual property issues. He provides strategic advice and practical assistance in all aspects of patent and intellectual property, including trade secret, trademark, and copyright acquisition and protection, as well as portfolio evaluation and management, licensing, and asset monetization. He further provides clients with legal opinions related to validity and enforceability, patentability, freedom to operate, intellectual property portfolio valuations, and pre-transaction due diligence investigations.
Tom’s in-house experience also includes executing worldwide patent procurement strategies to protect business critical inventions and formulating company-wide intellectual property policies and procedures on both local and international levels. Tom has considerable experience guiding IP-intensive transactions and ventures such as collaborations and joint ventures. He also assists entrepreneurs and venture capital groups in devising strategies to build value in their intellectual property portfolios.
Having been both a provider and consumer of intellectual property-related legal services, he is adept at leveraging his in-house experience to offer clients cost-effective, chief patent counsel-level services and guidance. Tom’s clients include key decision makers in a variety of public and private organizations, including biotech and medical device companies as well as research universities, both in the U.S. and abroad.
Prior to joining Prince Lobel, Tom was the Founder and Principal of BIPLaw LLC, where he served as IP counsel to emerging, small, and mid-sized biotech companies and research universities in the fields of molecular medicine, vaccines, therapeutic proteins and antibodies (including production and delivery techniques), cancer-related therapies and drugs, bioinformatics, medical diagnostics, medical devices, nanotechnologies, and mechanical inventions.
- Toledo College of Law, J.D., 1999
- University of Cincinnati, B.S., 1994
- U.S. District Court for the Western District of Wisconsin
- U.S. Patent and Trademark Office
- Wisconsin State Supreme Court
- American Intellectual Property Law Association
- National Association of Patent Practitioners
- Licensing Executive Society
- American Chemical Society
- Association of University Technology Managers
- Patent Experience: Responsible for numerous vaccine product franchises and technology platforms. Responsible for creating and executing global patent portfolio development and enforcement strategies (created out-licensed patent portfolio valued at €60 MM). Preparation and prosecution of U.S. and foreign patent applications concerning vaccine compositions and production technologies related to a number of bacterial and viral infectious agents and their consequent disease states as well as for therapeutic antibodies, bacterial fermentation, purification, and conjugation technologies, cellular and molecular biology, nucleic acid delivery systems, and complex manufacturing devices. Responsible for preparing validity, non-infringement, design around, and freedom to operate opinions concerning third-party patents. Responsible for developing IP strategies for new products in consultation with senior scientific and business leadership. Conducted IP audits designed to realize cost reductions, quantify asset values, and to develop improved procedures for obtaining, leveraging, and enforcing IP rights.
- Transactional Experience: Negotiated and drafted numerous types of agreements including confidentiality, material transfer, consulting, sponsored and collaborative research, technology transfers, manufacturing, quality, assumption, patent licenses, standstill, settlement, MLSA, and CRADA agreements. Managed IP issues and prosecution for in-licensed technologies. Conducted numerous due diligence evaluations on acquisition targets and licensing opportunities totaling approx. $1.5 B in assets. Member of the Sanofi Pasteur Strategic Integration Committee for managing newly acquired businesses.
- Opposition and Interference Experience: Formulated and executed strategic multijurisdictional offensive and defensive plans for patent prosecutions to maximum advantage over competitors. Actively monitored competitive patent landscape for risks and opportunities including primary responsibility for identifying and developing strategies for opposing and defending European patents of interest. Engaged, directed, and managed outside counsel in dozens of EPO oppositions and U.S. interference proceedings.
- Biosimilar and Generic (ANDA) Experience: Designed detailed IP strategies to protect and leverage originator status and company IP related to small molecules and biosimilars versus potential generic and follow competition. Small molecule FDA Orange Book (Form 3542/a) listing experience. Analyzed patent landscape and business opportunities for follow-on biologics and potential business operations in China and India.
- October 2018: “Trends in Biosimilars,” Financier Worldwide
- March 2018: Panelist, “Next Steps on Research Commercialization,” 2018 Spencer Fund Showcase, Bigelow Labs
- March 2018: Guest Lecturer, “Initial Considerations in Business and Intellectual Property–What Entrepreneurs Need to Know,” Francis College of Engineering, University of Massachusetts – Lowell
- 2009: Panelist, IP Law Summit 2009
- 2008: Speaker, “Recent Updates and Changes in US law on IP rights,” Pharma and Biotech IP Litigation Conference
Thomas J. Bordner