Thomas W. Dekleva Ph.D.

Partner

Philadelphia
T +1.215.564.2361
F +1.215.568.3439

Overview

Tom Dekleva combines his technology and commercial experience in the chemical industry with his legal training to focus his practice on intellectual property counseling, and the preparation and prosecution of patents for domestic and international clients across technologies. He also works with colleagues and clients on due diligence projects and freedom-to-operate and patentability analyses.

Tom brings to his clients a rich and diverse technical understanding and appreciation of the commercial imperatives of business. His technical experience includes a Ph.D. in organometallic chemistry, with associated academic experience in organic chemistry, catalysis, chemical engineering and ceramic processing. Prior to entering the field of law, Tom spent 22 years within a large international chemical company in several businesses – including those related to microwave and hybrid electronic interconnects, fluorochemicals, and natural and synthetic surfactants and lubricants – where he held various technical and commercial roles. As a technologist, he managed and contributed to hundreds of collaborative customer projects in these fields. As a commercial director, he was responsible for the North American sales and operations of an international fluorochemicals business.

Select Experience

  • Drafts and prosecutes patent applications in the U.S. and internationally, and conducts freedom-to-operate and validity searches. Has supported successful court challenges to USPTO activities and provided guidance with respect to portfolio management and filing strategies for individuals, universities, start-ups, and large and small chemical, energy and pharmaceutical companies.
  • Continues to develop and actively manage national and international patent portfolios in the areas of advanced materials and chemical processing, including a range of heterogeneous and homogeneous catalytic systems, applications of non-thermal plasma, medical devices, photoactive materials, ceramic and novel crystalline materials, functional polymers, rare earth magnets, nanotechnologies, fuel cells and flow batteries, small molecule pharmaceuticals, and organic and inorganic coatings.
  • Worked with clients to develop strategies and/or manage national and international patent portfolios in the areas of energy storage and generation (flow batteries, solid oxide batteries and fuel cells) for universities, start-ups and large companies. 
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Experience

  • Drafts and prosecutes patent applications in the U.S. and internationally, and conducts freedom-to-operate and validity searches. Has supported successful court challenges to USPTO activities and provided guidance with respect to portfolio management and filing strategies for individuals, universities, start-ups, and large and small chemical, energy and pharmaceutical companies.
  • Continues to develop and actively manage national and international patent portfolios in the areas of advanced materials and chemical processing, including a range of heterogeneous and homogeneous catalytic systems, applications of non-thermal plasma, medical devices, photoactive materials, ceramic and novel crystalline materials, functional polymers, rare earth magnets, nanotechnologies, fuel cells and flow batteries, small molecule pharmaceuticals, and organic and inorganic coatings.
  • Worked with clients to develop strategies and/or manage national and international patent portfolios in the areas of energy storage and generation (flow batteries, solid oxide batteries and fuel cells) for universities, start-ups and large companies. 
  • Has conducted freedom-to-operate and validity studies for medical device manufacturers, and drafts and prosecutes patent applications related to implants for universities, health care companies and medical device manufacturers.
  • Drafted and prosecuted patent applications and managed patent portfolios related to nanotechnology areas of energy and drug delivery for universities and start-up companies.
  • Manages and prosecutes patent portfolios for a range of clients in small molecule pharmaceuticals, including international portfolios for a multinational pharmaceutical company in the fields of cancer and disorders of the central nervous system. 
  • Has conducted numerous freedom-to-operate and validity searches for a range of clients in fields including energy storage, medical implants and devices, and small molecule pharmaceuticals.

Recognitions and Memberships

Recognitions

  • Pennsylvania Super Lawyers "Rising Star" (2016, 2017)

Industries

Prior Positions

  • Croda-Uniqema
    • Technical Director, Americas (2004 to 2008)
    • Technical Manager, Lubricants (2002 to 2003)
  • Ineos Fluor Americas LLC / ICI Klea
    • Commercial Director (1998 to 2001)
    • Marketing / Market Development Manager (1994 to 1998)
    • Technical Service Manager (1990 to 1994)
  • ICI Electronics, Senior Electronics Chemist (1985 to 1989)
  • Pennsylvania State University, Materials Research Laboratory: Visiting Scientist (1985)
  • Monsanto Company, Homogenous Catalysis Group: Post-Doctoral Fellow (1983 to 1985)

Admissions

  • U.S. Patent and Trademark Office, Registration No. 55,104
  • Pennsylvania

Education

  • J.D., Widener University School of Law, 2008, magna cum laude
  • Ph.D., Organometallic Chemistry, The University of British Columbia (Canada), 1983
  • B.S., Chemistry, Clarkson College of Technology, (now Clarkson University), 1978