Thomas Paulius

Thomas PauliusThomas D. Paulius joined the Law Offices of Konrad Sherinian in September 2012 as of counsel.  Tom has been practicing intellectual property law for over 30 years and counsels clients in patent, trademark and copyright matters, including intellectual property litigation and patent validity and infringement studies.  He has extensive experience in prosecuting patents and trademarks, having drafted 364 issued utility and design patents to date.

Tom concentrates his patent prosecution in the fields of mechanical and electrical technology, food processing and consumer products, drawing extensively upon his experience as Associate General Counsel at Molex Incorporated, where, in addition his patent prosecution duties, he trained patent engineers and counseled Asian divisions on patent procurement strategies.  As such, he works with manufacturing and processing clients on developing internal strategies for patent acquisition and maintenance.  In instances where patent applications are rejected repeatedly by a Patent Examiner, Tom prepares and argues appeals for his clients before the Board of Patent Appeals in the U.S. Patent Office.  Tom implements creative solutions for his clients, sometimes utilizing unorthodox strategies, such as filing and obtaining design patents on processed foodstuffs.   These creative approaches have earned Tom an AV rating by his peers from Martindale-Hubbell.

His nuclear power plant engineering experience was particularly helpful in representing numerous Midwestern municipalities and utilities in defending them against claims of infringement of a biofouling prevention patent that gained notoriety in the early days of the zebra mussel invasion of the Great Lakes.  Tom lectured at biofouling prevention conferences, domestic and foreign, on the problems that certain patents posed to the utility and manufacturing industry.

Tom works with trademark clients to develop unique house brands for use as trademarks and implements smart trademark adoption procedures for clients in order to avoid the common mistake of selecting of unregisterable marks that are either descriptive or geographical in nature.  For clients that are injured by overseas infringers, Tom works with U.S Customs in order to detain infringing goods at their ports of entry.

Lastly, Tom is also a freelance editorial photographer that has worked on assignment with a number of Chicagoland newspapers and magazines, as well as national print and electronic magazines, concentrating on high school and NCAA sports.  His editorial photography experience gives him a particular insight as to problems and pitfalls that artists and photographers encounter in protecting their works, and he has represented university photographers in their contract negotiations with universities.

Education

Chicago Kent College of Law
JD – 1982

University of Notre Dame
B.S. in Civil Engineering – 1976

Admissions

Illinois Supreme Court 1982; United States District Court for the Northern District of Illinois 1982; United States Court of Appeals for the Seventh Circuit 1982; United States Court of Appeals for the Federal Circuit 1982, United States District Court for the Central District of Illinois 1988, Registered Patent Attorney – United States Patent and Trademark Office

Publications

  • “Patent Pitfalls in the Design of Chlorination Systems” —Fifth International Zebra Mussel and Other Aquatic Nuisance Organisms Conference – Toronto, Ontario – February 1995
  • “Patent Infringement Liability of Biofouling Prevention Systems” — Fourth International Zebra Mussel Conference – Madison, Wisconsin – February 1994

Representative Cases