John Tolomei

John TolomeiPartner

John Tolomei is Chair of SpencePC’s intellectual property (IP) prosecution practice. Whether explaining IP rights to first-time inventors, or advising multibillion-dollar corporations on complex IP portfolios, he provides clients with a wealth of practical and diverse experience in patents, trademarks, copyrights, and trade secrets. As a registered patent attorney, Mr. Tolomei skillfully assists clients in obtaining, maintaining, and maximizing value from IP. His practice includes initial evaluation of inventions and other IP; preparation and prosecution of patent and trademark applications; cost-effectively developing and maintaining large and small IP portfolios; generating increased value through IP management; drafting and negotiating IP agreements; and developing and executing IP strategies to avoid or resolve disputes and interferences.

Mr. Tolomei is an honors graduate of the Illinois Institute of Technology, where he obtained Bachelor and Master of Science Degrees in Civil Engineering. After graduation, he began practice as an engineer to design process equipment for refineries and petrochemical facilities. While continuing work as an engineering specialist, and later as a patent agent, Mr. Tolomei obtained his J.D. degree with high honors from the Kent College of Law.

Prior to joining SpencePC, Mr. Tolomei was the chief patent counsel of a bio-tech startup and handled all aspects of its IP including building a substantial patent portfolio; initiating comprehensive IP protection policies and procedures; and overseeing complex trade secret litigation. As the start- up’s chief legal officer and corporate secretary, he also handled commercial legal issues and corporate governance tasks.

Before that Mr. Tolomei enjoyed an extended career as a patent attorney and chief patent counsel for Honeywell – UOP with responsibility for leading a large team of patent attorneys in all IP matters associated with a global portfolio of over 3,000 patents and an extensive inventory of trade secrets. Mr. Tolomei also served as a patent attorney for Deere and Company where he counseled clients and generated IP for complex mechanical machinery and systems.

While working as a patent attorney and chief patent counsel, Mr. Tolomei also found time to serve the 20,000 people in his local community of Lake Zurich for 14 years as an elected representative including a term as mayor.

Education

  • Law School – Juris Doctor from the Chicago-Kent College of Law in Chicago, Illinois
  • Undergraduate – Illinois Institute of Technology in 1975 with a Bachelor of Science in Civil Engineering

Court Admissions

  • Illinois State Bar
  • US Patent and Trademark Office

Professional Memberships

  • Association of Corporate Patent Counsel (ACPC)
  • American Intellectual Property Law Association (ACPC)
  • Association of Corporate Counsel (ACC)

Other Memberships

  • IIT Patent Hub Advisory Board Member – USPTO Pro Bono Program
  • Foglia YMCA Lake Zurich – Board Member

Speaking Engagements

  • IP Strategy Summit: “May 2015 Designing a Unified Prosecution Strategy”
  • October 2014 – IP Strategy Summit: “Defending Again Infringement Claims from Operating Companies”
  • October 2009 – Moderator for AIPLA Panel Discussion – “Ethics: Fraudulent Procurement of Patents, Trademarks and Copyrights
  • November 2007 – Marcus Evans IP Symposium – “Offensive and Defensive Patenting in China”
  • June 2007 – Marcus Evans IP Symposium – “Foreign Filing and Maintenance of Patents”
  • May 2004 – Panelist Jenner & Block Executive Breakfast Briefings – “The Big Fix (What needs to change in the Patent Laws)”
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