McCrackenFrank

Thomas R. Stiebel, Jr.

Partner

Thomas Stiebel has over twelve years of experience in acquiring, protecting, and exploiting intellectual property. Tom has conducted patent prosecution of inventions relating to: DNA and peptide sequences; gene therapy; genetic testing; cancer diagnostics; chemotherapeutic agents; antimicrobials; anti-inflammatory agents; vaccines; analgesics; hormone therapy; antiemetics; diuretics; antidepressants; proton pump inhibitors; antibodies; monoclonal antibodies; immunoassays; needleless injectors; polymer coatings; methods of treatment; combination therapy; drug formulations and delivery systems; medical devices; mechanical devices and processes; and business methods.

Tom has also negotiated and drafted patent licenses, strategic alliance agreements, and joint venture agreements for a variety of pharmaceutical, biotechnology, and chemical products. He has also developed global patent protection and litigation strategies for new pharmaceutical products, drafted and rendered opinions relating to the infringement, validity, and enforceability of patents, and performed due diligence investigations for transactions involving the transfer of patent and other intellectual property rights. In addition he has drafted opinions analyzing patent portfolios for presentations to senior management, boards of directors, and partnering companies. Tom’s expertise also extends into IP-related FDA issues including counseling clients and providing opinions regarding patent term extension strategies, claim strategies for listing patents on the FDA’s “Orange Book,” and assisting Paragraph IV patent infringement litigation teams. Tom also assisted in preparing a Federal Circuit amicus brief on behalf of the Washington Legal Foundation in Pfizer Inc. v. Dr. Reddy’s Laboratories, Inc.

Following law school, Tom was in-house counsel at Pharmacia (formerly G.D. Searle) and, prior to joining the firm, worked for a large Chicago area law firm. During law school, Tom worked as a Patent Liaison for G.D. Searle and Monsanto, where he prepared and prosecuted patent applications in the pharmaceutical and biotechnology area, performed novelty and prior art searches and analyses, and drafted and negotiated technology-related agreements. Prior to law school, Tom was a Research Associate at G.D. Searle where he conducted in vivo and in vitro studies in the area of infectious disease and diabetes.

Tom has also represented a worldwide research collaboration between a leading Australian company and a German-based pharmaceutical company to develop and commercialize novel compounds for a treatment of viral infections and other diseases.

Memberships
Arbitrator, International Arbitration Court of the Wuhan Arbitration Commission (WIAC)
China International Economic and Trade Arbitration Commission (CIETAC)

Professional Associations
American Bar Association
American Intellectual Property Law Association
Federal Circuit Bar Association
Intellectual Property Owners Association (Member, Arbitration and Mediation Committee)

Recent Professional Activities
Keynote Speaker: “Intellectual Property Protection of Plant Biotechnology: Food, Fuel, and Medicine,”2006 Taiwan – Midwest-USA Symposium on Science and Engineering, Northwestern University, Evanston, Illinois, June 10, 2006.

Pro Bono Activities

Successfully represented a Pakistani man and a Somali woman in their petitions for political asylum based on politically motivated torture.