Thomas J. Clare

Associate

Philadelphia
T +1.215.564.3022
F +1.215.568.3439

Overview

Tom Clare focuses his practice on patent prosecution, intellectual property (IP) strategy, IP portfolio management and IP litigation. Prior to becoming an attorney, Tom spent 10 years as an electrical engineer – five years in corporate management and five years as technical advisor to a law firm. Drawing on both his inside corporate and outside legal perspectives gained from a decade overseeing IP portfolios, today he approaches his work with a deep commitment to maximizing the strategic impacts and financial returns of client investments in patent legal services. Whether the issue is enforcing rights, raising licensing revenue or acquiring technology, Tom believes that it is critical for IP counsel to understand not just the client, but also the competitors, suppliers, technological trends and dynamics of the market in which the client operates.

Select Experience

  • Collaborates with inventors to develop disclosures, author domestic and foreign patent applications, and respond to patent office actions.
  • Established the intellectual property management group, policies and practices for a multinational electronics firm.
  • Rationalized a portfolio of 5,000 patents and trademarks in 80 nations, resulting in a recurring annual savings of $2 million.
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Experience

  • Collaborates with inventors to develop disclosures, author domestic and foreign patent applications, and respond to patent office actions.
  • Established the intellectual property management group, policies and practices for a multinational electronics firm.
  • Rationalized a portfolio of 5,000 patents and trademarks in 80 nations, resulting in a recurring annual savings of $2 million.
  • Developed multiple patent infringement and validity opinions.
  • Has supported multiple litigations. Led the electronic discovery for two IP litigations. Authored successful motions to quash subpoena and adopt to favorable standards. Worked with attorneys and expert witnesses to create Markman hearing presentations.
Issued Patents
  • U.S. Pat. No. 5,745,036 (Clare) Electronic article security system for a store that uses intelligent security tags and transaction data.
  • U.S. Pat. No. 5,963,134 (Bowers, et al.) Inventory system using articles with RFID tags. 
  • U.S. Pat. No. 6,025,780 (Bowers, et al.) RFID tags that are virtually activated and/or deactivated. 
  • U.S. Pat. No. 6,195,006 (Bowers, et al.) Inventory system using articles with RFID tags. 
  • U.S. Pat. No. 6,693,539 (Bowers, et al.) Inventory system using articles with RFID tags. 
  • U.S. Pat. No. 7,042,413 (Mazoki, et al.) Security tag with 3D antenna array made from flat stock.
  • U.S. Pat. No. 7,138,919 (Clare, et al.) Identification marking and method for applying the identification marking to an item. 
  • U.S. Pat. No. 7,384,496 (Cote, et al.) Security tag system for fabricating a tag including an integrated surface processing system.
  • U.S. Pat. No. 7,436,305 (Clare, et al.) RFID tags for pallets and cartons and system for attaching same. 
  • U.S. Pat. No. 7,568,108 (Monaco, et al.) Access control and security control system and method. 
  • U.S. Pat. No. 7,709,294 (Clare, et al.) Die attach area cut-on-fly method and apparatus. 
  • U.S. Pat. No. 7,961,102 (Clare, et al.) RFID tags for pallets and cartons and system for attaching same.

Recognitions and Memberships

Memberships

  • Intellectual Property Owners Association
    • Corporate IP Management Committee: IP Metrics Subcommittee

Emerging Issues

Prior Positions

  • Checkpoint Systems, Inc.: Director of Technology Development Worldwide (2003 to 2006)
  • Yale University: Strategy Consultant (2002)
  • Goodrich Pump and Engine Control Systems: Senior Electronics Engineer (1998 to 2001)
  • ABC Deco: Design Engineer (1997 to 1998)
  • PurePower/Elcom Technologies: Consultant, Design Engineer (1996 to 1997)
  • Checkpoint Systems, Inc.: Design Engineer, Project Engineer (1993 to 1996)
  • Drexelbrook Engineering Company: Product Engineer; Senior Product Engineer (1990 to 1993)

Admissions

  • U.S. Patent and Trademark Office, Registration No. 72,458
  • Pennsylvania

Education

  • J.D., Temple University Beasley School of Law, 2011
  • M.B.A., Yale University, 2003
  • B.S., Electrical Engineering, University of Pennsylvania, 1989