Thomas Wade Orsak, PhD
Thomas Wade Orsak, PhD
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
Representative experience
Representative experience
- 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
Rankings and recognitions
Rankings and recognitions
Best Lawyers: Ones to Watch in America, Patent Law, Best Lawyers, 2025
Education
Education
JD, Georgetown Law, 2014
PhD, Biochemistry, University of Utah, 2011
BS, Biochemistry, Brigham Young University, 2004
Admissions
Admissions
- Texas State Bar
- US Patent and Trademark Attorney
Publications
Publications
- Co-author, "Obviousness-type double patenting, terminal disclaimers and best IP practices," Insights, Norton Rose Fulbright, September 14, 2023
- Co-author, "Intellectual property in consumer brands and company valuations: Implications for mergers," Insights, Norton Rose Fulbright, May 11, 2023
- C-author, "Consumer products and IP (Part 6): deriving a copyright for consumer products," Consumer Products Law Blog, Norton Rose Fulbright, September 13, 2021
- Co-author, "Consumer products and IP (Part 5): the download on trademarks for consumer products," Consumer Products Law Blog, Norton Rose Fulbright, August 11, 2021
- Co-author, "Consumer products and IP (Part 4): demystifying the impact of trade secret misappropriation for consumer products," Consumer Products Law Blog, Norton Rose Fulbright, June 30, 2021
- Co-author, "Consumer products and IP (Part 3): the intersection between consumer products and design patents," Consumer Products Law Blog, Norton Rose Fulbright, May 25, 2021
- Co-author, "Consumer products and IP (Part 2): what's a patent got to do with it?" Consumer Products Law Blog, Norton Rose Fulbright, May 20, 2021
- Co-author, "Consumer products and IP (Part 1): why it matters," Consumer Products Law Blog, Norton Rose Fulbright, 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
Speaking engagements
Speaking engagements
- "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
Memberships and activities
Memberships and activities
- Austin Intellectual Property Law Association (AIPLA)
- State Bar of Texas
- US Patent and Trademark Office
Insights and news
Insights
News
