Cozen O’Connor: Pontani, Thomas C.

Thomas C. Pontani, Ph.D.

Member

New York

(212) 883-4989

(646) 588-1541

Thomas began practicing as a patent agent in 1978 and started practicing intellectual property law as an attorney in 1982. Thomas is a registered patent attorney with extensive experience in prosecuting and litigating patents, with a specific focus on litigations under the Hatch-Waxman Act. 

Since the enactment of the Hatch-Waxman Act in 1984, Thomas has successfully represented U.S. and foreign clients under the Act, assisting them to enter the U.S. market concerning generic drugs such as tamoxifen, ciprofloxacin, albuterol/ipratropium, terazosin, enalapril, norethindrone/ethinylestradiol, cyclosporine, bupropion, omeprazole, nabumetone, amoxicillin/clavulanic acid, and others. Thomas also has extensive experience in the preparation of opinions on patent validity, infringement, and freedom-to-operate issues in the chemical, pharmaceutical, and mechanical arts.

In addition, Thomas has prosecuted numerous patents, especially in the chemical, pharmaceutical, and mechanical arts for more than 25 years. He has also counseled clients on intellectual property issues and has lectured on U.S. patent law and practice in Europe, India, and China. Thomas earned his M.S. and Ph.D. from the University of Innsbruck and subsequently earned his J.D. from Fordham University School of Law. He is fluent in German.

Experience

Publications

USPTO Issues Revised Guidances Concerning 35 U.S.C. §§ 101 and 112 [Alert]

January 28, 2019

Tom Pontani, Ed Weisz, and Darren Mogil review the USPTO's new guidance for patent-eligible subject matter and claims using functional language to claim computer-implemented inventions.

Summary of the Impending United States Patent Act – the Leahy-Smith America Invents Act [Intellectual Property Alert!]

September 16, 2011

Summary of the Impending United States Patent Act – the Leahy-Smith America Invents Act - Intellectual Property Alert! - On September 8, 2011, the Senate approved the Leahy-Smith America Invents Act (H.R. 1249) (hereinafter “the Act”). It is expected that President Obama will sign the Act into law on Friday, September 16, 2011. When the Act becomes law, it will substantially modify the United States’ patent laws, regulations and procedures for the first time since 1952. There are numerous provisions of the Act, and varying dates upon which they take effect.

Education

  • Fordham University School of Law, J.D., 1982
  • University of Innsbruck, Ph.D., 1977
  • University of Innsbruck, M.S., 1974
  • New York
  • United States Patent and Trademark Office
  • U.S. Court of Appeals for the District of Columbia Circuit
  • U.S. Court of Appeals for the Federal Circuit
  • U.S. Court of Federal Claims
  • U.S. District Court -- District of Columbia
  • U.S. District Court -- Eastern District of New York
  • U.S. District Court -- Eastern District of Wisconsin
  • U.S. District Court -- Southern District of New York
  • U.S. District Court -- Western District of New York
  • U.S. District Court -- Western District of Wisconsin
  • American Bar Association
  • New York State Bar Association
  • ITC Trial Lawyers Association