Tom Meaney
Senior Counsel
Norton Rose Fulbright US LLP
Related services and key industries
Biography
Tom Meaney is a senior counsel in Norton Rose Fulbright’s Dallas office, having initially joined the firm in 1999. Tom assists clients identify and resolve intellectual property (IP), cybersecurity, and data privacy issues. He has experience providing underwriting diligence of IP, cybersecurity, and data privacy matters for insurance industry clients offering representations and warranties insurance (RWI), IP judgement preservation insurance, and IP-backed lending insurance products. He also uses his technology and privacy experience on multi-discipline firm deal teams guiding clients through merger and acquisition transactions from both the buyer and seller/target sides. He has assisted clients identify risks and develop solutions for compliance with CCPA, UK/EU GDPR, TCPA, PCI-DSS, and other relevant state and federal laws. Tom has broad technology transactions experience negotiating and drafting business, technology, and IP licensing agreements. Tom is also a registered patent attorney with a degree in electrical engineering and has both supervised teams of IP professionals and actively engaged in a large volume of patent preparation and prosecution before the US and international patent offices. Tom's technical experience covers a diverse range of technologies, including next generation ‘X’G, 5G wireless communication technologies, mobile devices, medical devices, computer and software-related technologies, and more.
Prior to joining the firm, Tom was a successful trial and appellate lawyer for the Texas Attorney General's Office providing litigation and appellate representation of multiple Texas state agencies in the area of state taxation. Tom first-chaired multiple hearings, trials, and appeals in state and federal trial and appellate courts.
Professional experience
Collapse allBS, Electrical Engineering, The University of Texas at Dallas, 2000
JD, St. Mary's University School of Law, 1992
BA, History, The University of Texas at Austin, 1989
After his second year at St. Mary's, Tom was elected to the Board of the St. Mary's Law Journal, as a Notes & Comments Editor.
- Texas State Bar
- US Patent and Trademark Attorney
Tom's representative experience includes:
- Developing procedure for and conducting IP, cybersecurity, and data privacy diligence of M&A transactions for RWI underwriting
- Developing procedure for and conducting diligence of IP-related judgements for Judgement Preservation Insurance underwriting
- Developing procedure for and conducting diligence of debtor IP valuation for IP-Backed Lending Insurance underwriting
- Leading the IP, cybersecurity, and data privacy diligence for buyer/seller/target company client in M&A transactions
- Leading negotiations in numerous business agreements and technology licenses including wireless subscriber agreements, master services agreements, embedded software licenses, branding agreements, shrinkwrap licenses/EULAs, copyright and trademark licenses, OEM licenses, non-disclosure agreements, technical employee agreements, and the like
- Managing large patent portfolio, prosecution, and harvesting for large San Diego-based communications company
- Leading IP negotiations for a New York Stock Exchange company in a complex spin-off of a foreign subsidiary
- Leading negotiations and drafting for European deployment of cloud-based gaming system for a New York Stock Exchange company
- Successfully developing and implementing a patent harvesting program for a large San Francisco-based software company leading to a substantial increase of patent filings during the first 3 years of the program
- Leading negotiations for a Palo Alto-based computer company against a notorious telecommunications non-practicing entity
- Leading IP negotiations and due diligence for a New York Stock Exchange company in a $50M+ joint venture involving complex licensing of a 200+ patent portfolio
Technical Experience:
Tom's representative technical experience includes:
- Wireless Telecommunications Systems: 'X'G, 6G, Ambient IoT operations, 5G, 4G LTE, OFDMA, CDMA, LTE, LTE-A Heterogeneous Networks, WiMAX, TD-SCDMA, Radio Frequency (RF) systems
- Medical Devices: Implantable Cardioverter Defibrillator (ICD) Devices, Pacemakers, Medical Device Lead Technology
- Electronics: RF Microelectronics, Microelectronics, Microelectronics Packaging, Nanotechnology, Semiconductor Fabrication
- Satellite Positioning Systems
- Computer and Software Technology: Equipment Management Software, Mobile Device Applications, Rich Internet Applications, Web Publishing, Web Applications, Digital Imaging
- Network Management: Internet Protocol (IP) Networks
- Wager and Non-Wager Gaming
- Co Author, "Supreme Court Issues Bilski – Business Methods Still Eligible, Federal Circuit to Address Further Business and Biotech Claims", Fulbright Briefing, June 2010
Presenter, Mergers & Acquisition School, "Core Agreement Provisions 1 - IP Representations and Warranties," 2011-2015.
- Texas Bar (1992)
- Dallas Bar Association
- Intellectual Property Section
- Mergers & Acquisitions Section
- Certified Information Privacy Professional - US (CIPP/US) (2022)
- U.S. Patent and Trademark Office (1998)
- U.S. Appeals Courts
- Federal Circuit Court of Appeals (1997)
- Fifth Circuit Court of Appeals (1995)
- U.S. District Courts
- Western District of Texas (1998)
- Northern District of Texas (1993)
- German