Thomas L. Irving

Partner

Tom Irving has some 36 years of experience in the field of intellectual property law in Finnegan’s D.C. and Belgian offices. 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, enforceability, and validity analysis in the chemical/pharmaceutical fields, as well as litigation. He has been involved as lead counsel in numerous patent interferences, reissues, and reexaminations, and has also served 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. 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.

Mr. Irving has served for more than 15 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 coauthors the multi-volume treatise used in the course. He also originated PRG’s Orange Book and Due Diligence courses and still teaches the Orange Book course. 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 American Intellectual Property Law Association (AIPLA) and Intellectual Property Owners Association (IPO). Mr. Irving also has lectured at many law schools in both the United States and China. He also has lectured at the Patent Office of the State Intellectual Property Office (SIPO) of the People’s Republic of China.

Highlights

• 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 other matters involving additional blockbuster drugs as Pulmicort^®, Respules^®, Taxotere^®, Eloxatin^®, Lantus^®, Crestor^®, and Allegra^®, as well as Apidra^®, Epiduo Gel^®, Rilutek^®, Ramipril^®, Duexis^®, and Viracept^®, and other drugs such as Rimonabant^®, Lorcaserin^®, HMPL 0004^®, and BG-12^® in clinical trials prior to FDA approval.

Professional Recognition

• Selected by his peers for inclusion in The Best Lawyers in America, 2005-2012.
• AV® rated by Martindale-Hubbell for more than 25 years.

Professional Activities

• American Intellectual Property Law Association (chair, Chemical Practice Committee, 1991; and member, Board of Directors, 1992-1994)
• Institute of Intellectual Property and Social Justice, Howard University School of Law (co-chair, 2008 - present)

Select Publications

• Coauthor. "Understanding the America Invents Act," ABA-IPL 27th Annual Intellectual Property Law Conference, Feb. 1, 2012.
• Coauthor. "A Panacea for Inequitable Conduct Problems or Kingsdown Version 2.0? The Therasense Decision and a Look into to the Future of U.S. Patent Law Reform," Virginia Journal of Law & Technology, Fall 2011.
• Coauthor. "A Hindsight-Averse Application of Lead Compound Case Law," Law360, Aug. 24, 2011.
• Coauthor. "Lead Prior Art Methodology: Applying Lead Compound Case Law to Other Disciplines for Enhanced Objectivity," Santa Clara Computer & High Technology Law Journal, Feb. 2011.
• Coauthor. "The Evolution of Intent: A Review of . . . Inequitable Conduct," University of Dayton Law Review, Oct. 2010.
• 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, July 2009. (Mondaq's most popular U.S. article, Jan. 2010). 
• Editor. "Intellectual Property Due Diligence," Patent Resources Group, 2008.