Pauly, Charles William

In September of 2012, Thomas Paulius joined the Law Offices of Konrad Sherinian having practiced solo as an IP Attorney providing patent searching, patentability opinions, preparation and prosecution of patent, trademark and copyright applications as well as intellectual property portfolio counseling and contract review for photographers.

Paulius' technical areas include electrical connectors, monitoring systems, subcutaneous medical devices and fishing reels.

From February 2009 - July 2010, Paulius was of Counsel to Leydig, Voit & Mayer in Chicago, Illinois. In this position, Paulius performed patentability searches and prepared opinions on patentability of proposed new products; prepared right to use opinions for product clearance purposes; prepared responses to US Patent and Trademark Office Actions for patent and trademark applications; performed intellectual property diligence reviews for purchase of IP assets. Technical areas included electrical connectors, circuit board construction, networking systems, medical devices and aggregate production processes.

Paulius also served as an Associate General Counsel from March 2001 - January 2009 at Molex Incorporated in Lisle, Illinois. From 2001- 2004, He trained patent engineers from India, Japan and United States in fundamentals of patent searching and claim analysis; provided educational sessions to Legal Department on updates to foreign patent prosecution practice; negotiated discounts with foreign associates on professional fees as part of department cost cutting objectives; liaison to Molex Japan Patent Group, providing US and PCT convention filing services for first-filed Japanese patent applications as well as periodically meeting with inventors in Japan discussing new products under development for understanding technology sought to be covered in Japanese applications; and, assisted Japan Patent Group in choosing countries for filing foreign counterpart applications.

In the years 2004-2009, Paulius implemented use of a AProject@ approach within connector divisions to identify basic components of new products for developing strategies for filing multiple patent applications on single new product for developing a licensing portfolio covering the product; Legal Department Representative to internal high speed development committee and attended meetings and made periodic presentations on current status of patent protection and high speed products.

During that time from 2007-2009, Paulius also supervised Manager of Japan Patent Group and visited Japan biannually to review new products developed in Japan, met with inventors to discuss, in detail, technology covered by Japanese patent applications; met with Japan marketing department to get advance notice of new product introduction areas; and, integrated Japan Patent Group with US Legal Department procedures.

In 2005 -2009, Paulius was involved in assessment of accusations of infringement, provided litigation support work for outside counsel in preparation of filing and litigating declaratory judgment actions, including invalidity searches and claim construction analysis for Markman hearings; Prepared patent application sets on new high speed connector design adopted as industry standard for use in licensing programs worth in excess of $2 million.

As a Partner at Vedder Price Kaufman & Kammhloz in Chicago, IL, Paulius moved with other Lockwood firm partners to establish intellectual property practice group at Vedder Price; Selected associate attorneys for hiring by the group and strategized with firm management on expansion of the practice group; Counseled clients on patent, trademark and copyright matters, including assessment of patents and trademarks, prosecution of design patents, utility patents and trademarks, validity and infringement studies and litigation, primarily emphasizing opinions and design and utility patent prosecution; Counseled photographers, Internet magazines and university athletic departments on copyright and clearance matters. Technical areas included mobile phone antennas, air filters and filtration equipment, backpacks, camera security mounts, double containment piping and assembly methods therefor, electrical connectors, foam dispensing devices and systems utilizing same, injection molding equipment and systems, jewelry, recreational equipment, sewage treatment pumps and waste comminutors, television security mounts and supports and wavesprings.

As Partner at Lockwood, Alex, Fitzgibbon & Cummings in Chicago, Illinois from 1988-2000, Paulius provided intellectual property practice basic services of patent, trademark and copyright counseling, preparation, prosecution and enforcement, including patentability opinions, right to use opinions, drafting and prosecuting utility and design patent applications, drafting and prosecuting trademark applications and appeals, preparing and filing copyright registration applications; registering trademark registrations with U.S. Customs Office and involvement with US Customs on policing importation of infringement goods; Successfully prosecuted ex parte appeals before the U.S. Patent Office Board of Patent Appeals and Trademark Trial and Appeal Boards. Technical areas included mobile phone antennas, agricultural machinery, air filters and filtration equipment, backpacks, camera security mounts, desk products, double containment piping and assembly methods therefor, electrical connectors, fishing rods and reels, foam dispensing devices and systems utilizing same, food chemistry, food distribution systems, injection molding equipment and systems, jewelry, medical devices, outdoor fireplaces, recreational equipment, sewer pipe repair systems, sewage treatment pumps and waste comminutors, television security mounts and supports, wave springs, and represented architects and engineering and construction firms in IP matters; Actively participated in patent and trademark litigation as second chair and local counsel lawsuits in Northern District of Illinois and other federal district courts involving agricultural machinery, zebra mussel control systems, cellular telephone components and consumer products; Lectured at the 4th International Zebra Mussel Conference in Madison, Wisconsin, and the 5th International Zebra Mussel and Other Aquatic Nuisance Organisms Conference in Toronto, Ontario, on patent problems encountered in the design of biofouling prevention systems.

Pauius started his career as an Associate where he learned and developed basic intellectual property law skills involving patent assessment and procurement and patent litigation. Represented homeowners associations pro bono in Illinois Commerce Commission water rate cases and subsequent appeals.