Thomas L. Irving

Partner

Tom Irving has more than 33 years of experience in the field of intellectual property law. His practice includes due diligence, patent prosecution, reissue and reexamination, patent interferences, and counseling, including prelitigation, Orange Book listings of patents covering FDA-approved drugs, and infringement and validity analysis in the chemical fields. He has been involved as lead counsel in numerous patent interferences.

During his early career, Mr. Irving was involved in every facet of several U.S. district court litigations, thus enhancing his ability to render advice in patent prosecution and infringement and validity areas. Outside of the patent law field, he has been actively involved in public health and safety issues related to the preparation and filing of Citizen Petitions before the FDA, most notably for the drug Lovenox®.

Mr. Irving has served for more than 10 years as principal teacher of Kayton's PRG Chemical Patent Practice course, a comprehensive U.S. chemical patent law course taught three times a year, and coauthors the multi-volume treatise used in the course. He also originated and is teaching PRG’s Orange Book and Due Diligence courses. Mr. Irving also presents analyses of Federal Circuit patent decisions for many groups, including the Ohio State, Michigan, and Houston IP Institutes and the North Carolina, Utah, Missouri, Minnesota, San Francisco, Denver, Los Angeles, the combined South and North Carolina, and the combined Oregon and Washington IP bars.

Mr. Irving has lectured at several law schools including Howard University School of Law, Washington College of Law at the American University, University of Virginia School of Law, Emory University School of Law, the University of Georgia School of Law, Ave Maria School of Law, Brigham Young University School of Law, the University of Utah School of Law, and Dayton University School of Law. Mr. Irving has been an invited speaker at the annual meeting of the Intellectual Property Owners Association (IPO), the Association of Corporate Patent Counsel (ACPC), and at national meetings of AIPLA. Mr. Irving has twice served as a motivational speaker for Lead America, Inc. He also serves as a lecturer to the Chemistry Examination Department of the Patent Office of the State Intellectual Property Office (SIPO) of the People's Republic of China.

Highlights

• Successfully prosecuted, on behalf of sanofi-aventis, the anti-cancer taxane small molecule interference Chen v. Bouchard, winning at both the Patent Office Board of Appeals and Interferences and the Federal Circuit.
• Reissued the patent for sanofi-aventis’s low molecular weight heparin drug, Lovenox®, a blockbuster product.
• Extensively involved in matters involving such additional blockbuster drugs as Pulmicort®, Respules®, Taxotere®, Eloxatin®, Lantus®, Crestor®, and Allegra®, as well as Apidra®, Rilutek®, Ramipril®, and Viracept®, and many drug products in clinical trials prior to FDA approval.
• Opened the firm’s Belgium office in 1993 and was Managing Partner there until 1998.

Professional Recognition

• Selected by his peers for inclusion in The Best Lawyers in America (2005-2010).
• AV® rated by Martindale-Hubbell for more than 20 years.

Professional Activities

• Former Chair of the AIPLA's Chemical Practice Committee and a former member of AIPLA's Board of Directors
• Co-chair of the Institute of Intellectual Property and Social Justice at the Howard University School of Law
• Member of Board of Editors of BNA International's IP & Technology Programme
• Member of the Advisory Board of the Patent Resources Group
• Former Chair of the Division of Chemistry and the Law, American Chemical Society

Select Publications

• Coauthor. "Nonobviousness in the U.S. Post-KSR for Innovative Drug Companies," University of Dayton Law Review, Oct. 2009.
• Coauthor. "Obviousness Developments in U.S. Patent Law," China IP News, June 2009.
• Editor. "Intellectual Property Due Diligence," Patent Resources Group, 2008.
• Coauthor. "Unique Aspects of U.S. Patent Protection," China Legal Review, June 2007.
• Coauthor. "The Inequitable Conduct 'Plague' in U.S. Patent Litigation: Is It Over and is the CAFC Moving Away from An Absolute Liability Standard?," BNA International's IP & Technology Programme, April 2006.
• Coauthor. "Conducting Thorough and Efficient IP Due Diligence Investigations in Corporate Acquisitions," BNA International's IP & Technology Programme, March 2006.
• Coauthor. "After Festo: The Issues on Remand," Intellectual Property Today, Dec. 2002.
• Crafting and Drafting Winning Patents," Patent Resources Group, 2000-2001.
• Coauthor. "Chemical Patent Law," Patent Resources Group, 1996-2008.
• "Patents Under GATT's Uruguay Round Agreements Act," Patent Resources Group, 1995.