Thomas P. Pavelko

My focus

My understanding and appreciation of the scientific endeavors of inventors was fostered initially as a Primary Examiner in the United States Patent and Trademark Office (USPTO), examining patent applications in the fields of ceramics, furnace linings, polymer processing, chemistry and related products. While still an Examiner, I obtained my law degree, which enabled me to move into the next phase of my government career, as Assistant Solicitor in the Office of The Solicitor of the USPTO. There I handled appeals to the newly created Federal Circuit, as well as representing the Commissioner in civil litigations brought in the district courts by way of 35 U.S.C. 145 actions.

As a private practitioner, I was instrumental in convincing the Fourth Circuit Court of Appeals to exercise personal jurisdiction over non-residents who utilized the USPTO to record assignments affecting disputed patent ownership; was trial counsel in the first case establishing the “theoretical claim analysis” utilized by the Federal Circuit in their pre-Markman claim interpretations; and participated in the largest single cancellation of patent claims ever obtained by reexamination.

With more than 30 years in private practice and a deep understanding of complex technology, as well as USPTO practices for expanding patent rights through re-issue, and limiting patent rights by reexamination and post grant review, I have worked with Fortune 500 companies as well as mid-size companies to counsel and guide them in securing, defending and enforcing their technologies through the patent laws. From opinions on new product clearances and launch, through defense in the USPTO and the courts, litigating on behalf of patent owners and accused infringers alike in the trial and appellate courts, I have a full appreciation of all aspects of the patent grant.

Looking ahead

The limits of technology cannot be constrained, even if the current legal system has artificially determined that certain inventions are not eligible for patenting. I am confident that Congress will reevaluate the patent law eligibility statutes of the United States and revise them to accommodate the ever-expanding creativity of the human spirit to accommodate all inventions of mankind.