Thomas Wade Orsak, PhD
Senior Associate
Norton Rose Fulbright US LLP
Related services and key industries
Biography
Thomas Orsak, PhD is a senior associate in Norton Rose Fulbright's Austin office. He focuses his practice on intellectual property matters which include domestic and foreign patent prosecution, enforcement, and strategic development of patent portfolios. Thomas' experience emphasizes biotechnology related matters and includes the areas of genetic engineering, gene therapy, molecular biotechnology assays, drug screening and targeting, enzymology, biotechnology, plants, organic chemistry, pharmaceutical development, and medical devices.
Thomas counsels clients regarding the development, management, and commercialization of commercially valuable intellectual property portfolios on a global scale. In 2019, Thomas participated in an over four-month part-time secondment with a global wound care company. Through this secondment, he received the unique and invaluable opportunity to work closely with the company's in-house attorneys and gained in-depth exposure to many aspects of the company's business.
Thomas' patent prosecution practice includes all aspects of drafting and prosecuting patent applications before the United States Patent and Trademark Office, including appeals before the Board of Patent Appeals and Interferences. He also supervises the prosecution of patent applications before many foreign patent offices. Thomas also has experience with the preparation of patentability and freedom-to-operate opinions.
Professional experience
Collapse allJD, Georgetown Law, 2014
Ph.D, Biochemistry, University of Utah, 2011
BS, Biochemistry, Brigham Young University. 2004
While in law school, Thomas won the Best Overall Iron Tech Lawyer as part of a team in the Iron Tech Lawyer Competition. He also acted as the Georgetown Law Patent Co-Chair for the Student Intellectual Property Law Association and the J. Reuben Clark Law Society Secretary.
- Texas State Bar
- US Patent and Trademark Agent
- Preparing patent applications, responses to office actions, appeal briefs, examiner interviews, and a variety of other related prosecution matters
- Formulating strategies for prosecuting patent applications in foreign jurisdictions and supervising execution of those strategies
- Strategic portfolio development for small, medium, and large companies and universities
- Development and management of strategies and process of IP review and clearance during and after product development
- Monitoring and maintenance of companies' patent portfolios
- Applications for Plant Variety Protection
- Working closely with in-house attorneys at a global wound care company during a secondment at the company's headquarters
- Co-author, "Intellectual property in consumer brands and company valuations: Implications for mergers" Norton Rose Fulbright's Insights, May 11, 2023
- Co-author, "Consumer products and IP (Part 5): the download on trademarks for consumer products" Norton Rose Fulbright's Consumer Products Law Blog, August 11, 2021
- Co-author, "Consumer products and IP (Part 4): demystifying the impact of trade secret misappropriation for consumer products" Norton Rose Fulbright's Consumer Products Law Blog, June 30, 2021
- Co-author, "Consumer products and IP (Part 3): the intersection between consumer products and design patents" Norton Rose Fulbright's Consumer Products Law Blog, May 25, 2021
- Co-author, "Consumer products and IP (Part 2): what's a patent got to do with it?" Norton Rose Fulbright's Consumer Products Law Blog, May 20, 2021
- Co-author, "Consumer products and IP (Part 1): why it matters" Norton Rose Fulbright's Consumer Products Law Blog, May 17, 2021
- Co-author, "Stream-of-commerce considerations for consumer product patent infringement claims," Consumer Products Law Blog, Norton Rose Fulbright, December 15, 2020
- Co-author, "Healthcare and Technology," Texas Bar Annual Meeting, June 17, 2016
- Co-author, "US Supreme Court Rules Isolated DNA is Not Patent-Eligible," Norton Rose Fulbright Legal Update, June 18, 2014
- Co-first author, "A Mitochondrial Pyruvate Carrier Required for Pyruvate Uptake in Yeast, Drosophila, and Humans," Science, Vol. 337 no. 6090, pp. 96-100, July 6, 2012
- First author, "Revealing the Allosterome: Systematic Identification of Metabolite-Protein Interactions," Biochemistry, Vol. 51 no. 1, pp. 225-232, January 10, 2012
"Intellectual Property Practice," 5th Annual San Antonio Conference on Stem Cell Research & Regenerative Medicine
"Intellectual Property Practice," 6th Annual San Antonio Conference on Stem Cell Research & Regenerative Medicine
- Austin Intellectual Property Law Association (AIPLA)
- State Bar of Texas
- US Patent and Trademark Office
Thomas worked with a U.S. Army judge advocate to address the issue of benefit eligibility for the over 22 million military service members, veterans, and their families. Through this collaboration, Thomas and a team of fellow law students developed the Military Impact of Discharge Assessment System (MIDAS) app. MIDAS was designed to assist adjudicators at the Department of Veterans Affairs to determine which VA benefits a service member is eligible.
Thomas has also provided pro bono patent prosecution services to individual inventors.
Insights
Intellectual property in consumer brands and company valuations
Publication | May 10, 2023