Thomas Wade Orsak, PhD

Partner
Norton Rose Fulbright US LLP

Austin
United States
T:+1 512 536 3079
Austin
United States
T:+1 512 536 3079
Thomas Wade Orsak, PhD

Thomas Wade Orsak, PhD

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Biography

Thomas Orsak, PhD, focuses his practice on intellectual property matters which include domestic and foreign patent prosecution, enforcement, and strategic development of patent portfolios. Thomas's 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's patent prosecution practice includes all aspects of drafting and prosecuting patent applications before the United States Patent and Trademark Office (USPTO), including appeals before the Patent Trial and Appeal Board (PTAB). 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 (FTO) opinions.

Thomas has also provided pro bono patent prosecution services to individual inventors.


Professional experience

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JD, Georgetown Law, 2014
PhD, Biochemistry, University of Utah, 2011
BS, Biochemistry, Brigham Young University, 2004

  • Texas State Bar
  • US Patent and Trademark Attorney
  • 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
  • Strategic commercialization and licensing of intellectual property
  • 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
  • Best Lawyers: Ones to Watch in America, Patent Law, Best Lawyers, 2025

  • "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