Tom is a registered patent attorney who develops and protects complex patent, trademark and copyright portfolios maintained by domestic and global businesses. He has significant experience in negotiating and drafting software licenses, patent and trademark licenses and transfers, non-compete and confidentiality agreements, product development agreements, joint venture agreements and all related agreements that include critical intellectual property components. He also regularly performs thorough product clearance searches on behalf of clients. Tom represents clients in all aspects of intellectual property disputes, with an emphasis on patent, trademark, trade dress and copyright infringement litigation.
Tom has extensive experience in the mechanical and electromechanical fields, where he has drafted and prosecuted hundreds of patent applications with a particular focus on hydraulic drive systems, transaxles, pumps, motors and related control systems, differentials and gearing systems, vehicle engines, rail transportation equipment, automotive components and systems, snow throwers, agricultural equipment and kitchen and household products.
Clients appreciate Tom’s aptitude for understanding their businesses and goals, and for finding efficient, cost-effective strategies for developing and protecting their intellectual property. His experience in all aspects of intellectual property law enables him to provide a comprehensive understanding of the issues involved in each project.
He is an active volunteer and also serves as a member of the Board of Directors for Lawyers for the Creative Arts, an organization that provides pro bono legal services to low income artists and arts organizations.
Tom has been selected for inclusion in the the Intellectual Asset Management’s (IAM) Patent 1000 in Prosecution since 2023. He has also been recognized by the World Trademark Review 1000 for “Trademark Prosecution and Strategy” since 2022 and recommended by The Legal 500 United States in “Trademark Litigation” since 2021. Tom was also recognized as a leader in the 2009 and 2010 editions of Chambers USA: America’s Leading Lawyers for Business in “Intellectual Property.”
- Lawyer Page: https://www.nge.com/Our-Lawyers/Thomas-McDonough
- Two North LaSalle Street, Suite 1700
Chicago, IL 60602-3801
- University of Wisconsin–Madison, J.D., graduated 1988
- University of Illinois at Urbana–Champaign, B.S., graduated 1985
- Illinois, Illinois State Bar Association
- U.S. Supreme Court
- U.S. Court of Appeals for the Federal Circuit
- U.S. District Court for the Northern District of Illinois
- U.S. District Court for the Western District of Wisconsin
- U.S. Department of Commerce - Patent and Trademark Office
43 The Best Lawyers in America® awards
17 Best Lawyers: Ones to Watch® in America awards
- Trademark Law
- Copyright Law
- Litigation - Intellectual Property
- Litigation - Patent
- Patent Law
- Transportation Law
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