Thomas Scherer
- Partner | U.S. Patent Attorney and Attorney at Law
- English
Tom Scherer’s practice emphasizes trademark and patent prosecution, litigation, and strategy in the fields of aerospace (e.g., vehicular control, inflatable habitats, and habitat/vehicle interconnections), automotive (e.g., vehicular headlamps, vehicular remote sensing/access, and vehicular battery/engine control), electronics (e.g., biometric monitoring, consumer products, and semiconductor testing), oilfield technologies (e.g., threaded tubular connections, offshore platform structure/supply, and safety monitoring systems), optics (e.g., lasers and laser measurement), power systems (e.g., high voltage energy storage, photovoltaics, and battery technologies), and telecommunications (e.g., base station/user equipment communications).
Mr. Scherer has extensive experience in foreign and domestic, design and utility patent preparation and prosecution, preparation of validity/infringement opinions, and intellectual asset management. His practice also includes licensing, dispute resolution, and post-grant proceedings at the USPTO. Mr. Scherer was previously a patent engineer for Fish & Richardson, P.C. and passed the Engineer in Training (EIT) exam in Ohio.
Admissions
- State Bar of Texas
- United States Patent and Trademark Office
PROFESSIONAL HONORS
- “Top Lawyer,” H Texas magazine (2017, 2018)
- “Texas Rising Star,” Texas Super Lawyers (2005)
- BakerBotts Award, Institute for Intellectual Property & Information Law, “A Legal Analysis of Deep-Linking on the Internet.” (2002)
PROFESSIONAL ACTIVITIES & MEMBERSHIPS
- American Intellectual Property Law Association
- Business Advisory Council, Honorary Chairman
- Houston Intellectual Property Law Association
- Institute for Intellectual Property and Information Law
- Houston Bar Association
- University of Houston Law Center, J.D., 2001
- Ohio State University, B.S., Electrical Engineering, 1997
RELATED ARTICLES
SELECTED PUBLICATIONS & PRESENTATIONS
- “Artificial Intelligence and Computer-Related Inventions: Patent Strategy in the U.S.” – GDTE, Hangzhou, China (2023)
- "Obviousness in Design Cases" - CIPAC, Jinan, China (2023)
- JPAA/AIPLA Joint Meeting, "Patent Prosecution Conflicts" (2021)
- “Patent-Eligible Subject Matter,” Tokyo, Japan (2017) (with Japanese translation)
- “Contesting U.S. Patents Post-Grant,” Kyoto, Japan (2016)
- “Application of 35 U.S.C. 112(f) after Williamson v. Citrix Online, LLC,” Osaka, Japan (2015)
- “America Invents Act (Provisions Effective March 16, 2013),” Tokyo, Japan (2013)
- “U.S. Litigation (Strategic Preparations and Statistics),” Tokyo, Japan (2012)
- “America Invents Act U.S. Patent Reform of 2011,” Houston, Texas (2011)
- “PTA Calculations after Wyeth,” Houston, Texas (2010)
- “Making Sense of the Complexities of Patent Term Adjustment” (2010)
- “Drafting Global Patent Applications,” Texas Bar CLE Patent Prosecution Workshop, San Antonio, Texas (2009)
- “Foreign Acts and 35 U.S.C. 271,” Tokyo, Japan (2008)
