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Education

  • J.D., South Texas College of Law, 1985
  • A.B., Worcester Polytechnic Institute and College of the Holy Cross, Physics and Chemistry, 1979

Bar Admissions

  • Massachusetts
  • U.S. Patent & Trademark Office

Court Admissions

  • U.S. Court of Appeals, Federal Circuit
  • U.S. Court of Appeals, First Circuit

Memberships & Affiliations

American Intellectual Property Law Association

Boston Patent Law Association

Massachusetts Bar Association

Thomas O. Hoover

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Partner
  • T: 617.449.6572
    F: 617.607.9200

Thomas Hoover has worked as a patent attorney for over 25 years. His practice is devoted to counseling clients with respect to intellectual property rights including patent, trademark and copyright law. He has been responsible for the development and oversight of both US and foreign patent portfolios for large and small corporations, universities, hospitals and venture funded start-ups through commercialization, acquisition or initial public offering. His practice includes the prosecution of patents before the US Patent and Trademark Office, patent appeals, reissue, reexamination and opposition proceedings in foreign jurisdictions including extensive experience in Europe, Japan and China. He has been responsible for the preparation of infringement and validity opinions, product clearance opinions, the negotiation and drafting of license agreements, manufacturing and distribution agreements, settlement agreements, and other transactions involving intellectual property rights.

Mr. Hoover has served as lead counsel in contested interference, inter partes review and protested reissue proceedings and has been involved in trade secret and patent infringement litigation including discovery, deposition and motion practice. Examples include multidistrict patent infringement litigation on lateral imaging bone densitometers, an inventorship dispute on optical fiber catheters and the use of counterclaims based on design patent infringement that enabled a favorable settlement for a client defending allegations of infringement.

With a background in physics and chemistry, Mr. Hoover has substantial experience with respect to electronic control systems and related firmware and software, networked communications, detectors and imaging technology, microelectromechanical systems (MEMS), flight control systems, semiconductors and instrumentation in the semiconductor industry, electro-optic materials, integrated circuits, optical storage media, electronic materials, nanomaterials, fiber optic technology, optical systems, polymer materials and plastic molding technology, data processor, data warehousing and data storage technology, web-enabled business and financial software technology, mobile application software and programming interfaces.

Mr. Hoover’s experience also includes medical devices and imaging technologies for surgical and diagnostic use including digital x-ray, computed tomography, ultrasound, endoscope and magnetic resonance imaging modalities. He has developed particular experience handling large U.S. and foreign portfolios involving medical implants, surgical procedures, tissue spectroscopy, microscopy, interferometric measurements, and computational methods in biology, chemistry and medicine.

Mr. Hoover has counseled clients regarding clearance and competitive strategic analysis in highly competitive global markets including guidance on trade dress, trademark registration and infringement issues.

Mr. Hoover began his professional career as a staff scientist researching the properties and fabrication of semiconductor materials and then in digital image processing.