Thomas L. Irving
Tom Irving has nearly 40 years of experience in the field of intellectual property law. His practice includes AIA post-grant proceedings, due diligence, counseling, patent prosecution, reissue and reexamination, and patent interferences. He counsels clients on a wide range of chemical and pharmaceutical matters, including pre-litigation, Orange Book listings of patents covering FDA-approved drugs, infringement issues, enforceability and validity analysis, and litigation. A significant portion of Mr. Irving's current practice is focused on AIA post-grant proceedings, including how to enhance the strength of patents to protect against post-grant challenges. He has served as lead counsel in numerous patent interferences, reissues, and reexaminations, and as an expert witness in patent litigation.
Mr. Irving has been involved in every facet of several U.S. district court litigations, thus enhancing his ability to render advice in due diligence, enforceability, infringement, validity, and patent prosecution areas.
Mr. Irving has served for 25 years as principal teacher of the PRG Chemical Patent Practice course, a comprehensive U.S. chemical patent law course taught three times a year, and he coauthors the multi-volume treatise used in the course. He originated PRG's Orange Book and Due Diligence courses as well as PRG's course taught three times a year to prepare patent owners, through effective application drafting and prosecution, to withstand the rigors of AIA's inter partes review (IPR) and post-grant review (PGR). He presents analyses of U.S. Court of Appeals for the Federal Circuit patent decisions for many state bar association groups and is a frequent speaker at national bar association meeting such as the American Intellectual Property Law Association (AIPLA), Intellectual Property Owners Association, and American Bar Association. Mr. Irving has lectured at many law schools in both the United States and China. He also has lectured at the Cold Spring Harbor National Laboratory graduate school, the Patent Office of the State Intellectual Property Office (SIPO) of the People's Republic of China, and has presented nearly 40 Strafford Webinars on patent law topics, including a number that deal with AIA's post-grant proceedings. Outside of the patent law field, he has been involved in public health and safety issues related to the preparation of Citizen Petitions before the FDA.
- Accord Healtcare, Inc. v. Helsinn Healthcare, SA. (PTAB). Represented Helsinn in first-ever PGR dealing with pharmaceuticals. Settled prior to institution.
- Directed the preparation of two highly complex IPRs for possible use in settling litigation.
- Successfully prosecuted the anti-cancer taxane small molecule interference Chen v. Bouchard, prevailing both at the U.S. Patent and Trademark Office Board and the Federal Circuit.
- Successfully reissued the patent for the low molecular weight heparin drug, Lovenox®, a blockbuster product.
- Extensively involved in counseling, due diligence, prosecution and prelitigation for matters involving major drugs such as Aloxi®, Tecfidera®, Lorcaserin®, Pulmicort®, Respules®, Taxotere®, Eloxatin®, Lantus®, Crestor®, Targretin®, Brilinta®, Halaven®, Allegra®, Apidra®, Epiduo Gel®, Rilutek®, Ramipril®, Duexis®, Viracept®, and other drugs such as Rimonabant® and HMPL 0004®, in clinical trials prior to FDA approval.
- Opened the firm's first European office in Brussels, Belgium, 1993.
- Selected by his peers for inclusion in The Best Lawyers in America, 2005-2016.
- Recognized as a Washington, D.C. "Super Lawyer" in Intellectual Property, Super Lawyers, 2008-2010, 2013-2015.
- Ranked among top U.S. patent lawyers in Legal Media Group's Guide to the World's Leading Patent Law Practitioners since 2011.
- Judicial®, AV-Preeminent®, and AV® rated by Martindale-Hubbell.
- Recognized as a leading patent prosecutor in the D.C. area, 2012-2015; and nationally for post-grant procedures by Intellectual Asset Management, 2015.
- Inducted into the LMG Life Sciences Hall of Fame, 2015; and listed as an Intellectual Property: Life Sciences Star, 2012-2014.
- AIPLA (chair, Chemical Practice Committee, 1991; and member, Board of Directors, 1992-1994)
- Institute of Intellectual Property and Social Justice (co-chair, 2008-present); Howard Intellectual Property Program (founding board member, 2015); Howard University School of Law
- Chinese American Biopharmaceutical Society (CABS)
- Coauthor. "The Latest Unsuccessful Inter Partes Review Petitions," Law360, Oct. 30, 2015.
- Coauthor. "Pre-Institution at PTAB: Obtaining a Denial Is a Patent Owner Win - Part 2: Substantive Bases of Challenge," IPO Law Journal, Oct. 22, 2015.
- Coauthor. "Objective Evidence in IPRs to Date: Why Are Most Patent Owners Losing?" Bloomberg BNA, Oct. 9, 2015.
- Coauthor. "Pre-Institution at PTAB: Obtaining a Denial Is a Patent Owner Win - Part 1: Technical Bases of Challenge," IPO Law Journal, Oct. 5, 2015.
- Coauthor. "An Update on Unsuccessful Inter Partes Review Petitions," Law360, May 28, 2015.
- Coauthor. "Teva's Effect on Review of PTAB Claim Construction Rulings," Law360, May 11, 2015.
- Coauthor. "Impact of America Invents Act on Biotech Intellectual Property," Cold Spring Harbor Perspectives in Medicine, April 28, 2015.
- Coauthor. "3 Lessons from Unsuccessful Inter Partes Review Petitions," Law360, April 22, 2015.
- Coauthor. "Introduction to Intellectual Property: A U.S. Perspective," Cold Spring Harbor Perspectives in Medicine, March 27, 2015.