Current Employment Position(s)

Partner

Lawyer Overview

Tom Briggs primarily practices in the area of technology (biotech, chemical, information, semiconductor, telecom, and other technologies)-based transactions, such as strategic alliances, licensing, joint ventures, mergers, acquisitions, and divestitures, where information, knowledge, intangibles, and intellectual property constitute a significant part of, or sometimes entirely, the subject matter for the transaction. Tom has recently represented AlphaMicron, Athersys, Bunge, Celgene, Cleveland-Cliffs, Dana, Dow Corning, IBM, MedImmune, Micron, Riverside Partners, Timken, Turbine Engine Components Technologies (TECT), and University Hospitals of Cleveland.

Tom spends a significant amount of time negotiating and drafting agreements that involve the transfer or sharing of intellectual property (including agreements related to research, licensing, clinical trials, employment, confidentiality, noncompetition, consulting, joint development, assignment, supply, manufacturing, outsourcing, sales agency, and information technology) and performing technology and intellectual property acquisition due diligence. Tom has developed particularly effective methods to assist client's in establishing formal, global intellectual property management programs and to conduct audits of a client's existing technology/intellectual property management program. He also regularly gives educational seminars on various intellectual property and technology transaction subjects in both public and private settings, including corporate compliance presentations.

Tom also practices in the area of technology and intellectual capital management, counseling clients on strategies, tactics, and procedures for (i) developing or acquiring technologies to meet global business goals and (ii) recognizing, procuring, protecting, maintaining, exploiting, and enforcing a client's intellectual property portfolio that results from the client's technology development and acquisition activities. To better serve technology transaction and technology management clients, Tom draws upon his prior litigation and prosecution experience with Jones Day, his in-house counsel experience with the M.A. Hanna Company/PolyOne Corporation and ElastomerSolutions.com, LLC, and his 10 years as a practicing chemical engineer.

Tom has litigated matters involving patent, trademark and copyright infringement, unfair competition, trade secret misappropriation, and breach of covenant not to compete; and he has participated in opposition, cancellation, and interference proceedings before the U.S. Patent and Trademark Office. Tom has also prosecuted patents and trademark registrations at the U.S. Patent and Trademark Office, copyright registrations at the U.S. Copyright Office, and patents and trademark and copyright registrations in similar foreign governmental offices through foreign agents.

From 1998 to 2000, Tom was chief intellectual property officer and associate general counsel at M.A. Hanna Company in Cleveland, where he developed significant technical experience in the fields of polymers (rubber, thermoplastics, and thermoplastic elastomers), their additives, and their compounding. Tom developed and implemented a technology management program, including strategies, tactics, and procedures for the acquisition, development, sharing, and protection of polymer technologies spanning 8,000+ employees in more than 85 locations in 23 countries to support 2.3 billion in sales. In 2000, he also served as assistant secretary and legal issues team co-leader during the formation and incubation stages of ElastomerSolutions.com, a business-to-business Web site established by a consortium of companies in the rubber industry.

Tom has an extensive field engineering background, having held various plant engineering and management positions throughout his 10 years employed by Union Carbide Corp., Union Carbide Industrial Gases, and Praxair. From this experience, he developed special technical knowledge in certain fields and technical familiarity with a wide variety of plant engineering and lab research equipment. Perhaps more important though, Tom developed an appreciation and understanding of the needs, expectations, and tasks that engineers and scientists face in their working environment.

Tom is a member of the Ohio State Bar Association (Intellectual Property Section), the Cleveland Metropolitan Bar Association, the Cleveland Intellectual Property Law Association, the Licensing Executives Society, the Association of University Technology Managers (AUTM), and the Biotechnology Industry Organization Committee on Technology Transfer.

Areas of Practice

• Intellectual Property
• Licensing & Technology Transactions
• Mergers & Acquisitions
• M&A
• Joint Ventures & Strategic Alliances
• Life Sciences
• Consumer Products & Retail

Representative Cases

• Acquisition
• Acquisition by Investor Group
• Acquisition of Denison International plc
• Acquisition of GLS
• Acquisition of International Multifoods
• Acquisition of Jif and Crisco
• Acquisition of Liberty House
• Acquisition of the electronics business of Rockwood Holdings
• Acquisition of Torrington
• Acquisition of Tyco Electronics Wireless Systems , (2009)
• Acquisition of Universal Furniture
• Acquisition of Vyncolit
• Alliance with Kobe Steel
• Alliance with Schering-Plough
• Alliance with StorageTek
• Bendix Spicer Foundation Brake Joint Venture
• BioWa's POTELLIGENT License
• Business Merger and Technology Acquisition
• Buyout
• Buyout
• Buyout
• Buyout
• Buyout
• Buyout
• Buyout
• Buyout
• Buyout , (2009)
• Clinical Trial Agreements
• Company Formation, Financing and Technology Acquisition
• Intellectual Property Management Program Design and Licensing Activities
• Joint Venture
• Joint Venture with Intel
• Kent Automotive and Premier Industrial Sale
• Mesabi Nuggets Project
• Retail Alliances
• Sale of Delta Petroleum Company, Inc.
• Sale of Latrobe Steel
• Sale of Lord & Taylor
• Sale of Navigation business
• Sale of Printer Business
• Sale of TruSeal Technologies
• Sale to J.M. Smucker
• Singapore Joint Venture with Intel
• Strategic Alliance
• Strategic Alliance with Permo-Drive
• Strategic Alliances and Sale of Business
• Technology Acquisitions

West Practice Categories

Business Organizations, Business Successions, Closely Held Businesses, Copyrights, Corporate Governance, Directors' & Officers' Liability, Dissolution, Formation & Business Planning, Franchising, Intellectual Property Law, International Intellectual Property, Joint Ventures, Limited Liability Companies, Mergers, Acquisitions & Divestitures, Non-profit & Tax-exempt Organizations, Partnerships, Patents, Reorganizations, Shareholders' Rights, Technology Licensing, Trade Associations, Trade Dress, Trade Secrets, Trademarks

Bar Admissions

• California
• Ohio

Education

• John Marshall Law Schl-Chicago

Published Works

• Quanta Computer v. LG Electronics: The U.S. Supreme Court Breathes New Life Into the Patent Exhaustion Defense, 2008

Address

12265 El Camino Real Suite 200
San Diego, CA 92130-4096

Phones

1.858.314.1164 (Business Phone)

Faxes

1.858.314.1150 (Business Fax)

Emails

Contact Us (Business Email)

Websites

http://www.jonesday.com