THOMAS J. SIEPMANN, J.D., PH.D
Siepmann IP, PLLC is a full-service intellectual property law firm owned and operated by Thomas J. Siepmann, J.D., Ph.D. providing clients legal advice and counsel primarily in patents and licensing. Thomas Siepmann is a licensed attorney in good standing with the Utah State Bar and the District of Columbia Bar. Thomas Siepmann is also a registered patent attorney representing clients before the U.S. Patent & Trademark Office.
Education
Licenses & Current Bar Admissions
Professional Affiliations
Publications
Legal Experience
Thomas J. Siepmann, J.D., Ph.D., practices in the field of intellectual property law, including patent and trademark preparation and prosecution.
Dr. Siepmann's experience includes nearly fifteen years of preparing and prosecuting patent applications, preparing fit-to-purpose validity and infringement opinions, negotiating and executing patent licensing agreements, as well as post-grant work such as patent interference proceedings.
Dr. Siepmann's legal experience began at two small intellectual property boutique law firms: TraskBritt, P.C. in Salt Lake City, Utah, and Birch, Stewart, Kolasch & Birch, L.L.P. in the Washington, D.C. metropolitan area. At these boutique firms, Dr. Siepmann's practice focused on patent preparation and prosecution in genetics, material chemistry, polymer science, biologics (antibodies and recombinant proteins), as well as various applications of classical biochemistry. Here, Dr. Siepmann also gained experience protecting innovations in the pharmaceutical field (compositions and methods of manufacture), the personal care industry (consumable products), and industrial chemistry (large scale chemistry). As a senior associate, Dr. Siepmann trained junior associates and reviewed their work, and his docket grew to several hundred active patent applications. Dr. Siepmann's contribution to the drafting of motions in a critical high-stakes patent interference related to PD-L1 was pivotal in winning the Court's decision in favor of the client. While at BSKB, Dr. Siepmann played a crucial role in educating attendees concerning U.S. patent law at their annual Summer Patent Seminar and Advanced Patent Law Seminars.
In addition to his law firm experience, Dr. Siepmann was Director of Intellectual Property at Affymetrix, Inc. (now Thermo Fisher Scientific) in Santa Clara, California. He managed global patent portfolios and played a crucial role in various corporate intellectual property matters there. In addition to drafting patent applications in the fields of minor molecule chemistry, nucleic acid chemistry, genetics, diagnostics, and laboratory tools, Dr. Siepmann drafted and negotiated numerous patent licensing agreements, as well as scientific collaboration agreements, consortium agreements, and common material transfer and non-disclosure agreements. In one particularly impactful project, Dr. Siepmann performed critical due diligence related to an outdated "legacy" license agreement leading to its renegotiation, saving the company over 1M USD. Dr. Siepmann's responsibilities at Affymetrix included the drafting of "fit-to-purpose" infringement and freedom-to-operate opinions. Dr. Siepmann also sat in on product development meetings and advised product development groups to protect ongoing innovation and intellectual property due diligence and clearance before launching critical products.
Dr. Siepmann also worked as counsel at the K-Street, Washington, D.C., a satellite office of the St. Louis-based law firm of Thompson Coburn. His responsibilities included strategic counsel and prosecution of several large multi-national patent portfolios directed to biologics targeting various indications from cancer to neurological conditions. From there, Dr. Siepmann rose to an officer position at the east coast-based law firm of LeClairRyan, where he assisted with drafting patent applications in the field of neurological conditions and devised strategies for continued prosecution of various multi-national patent portfolios.
Scientific Training
Dr. Siepmann holds a bachelor of science degree in biochemistry from the University of Illinois, where his senior thesis project involved studying bacterial chemotaxis as controlled by calcium ion receptors in Bacillus Subtilus in the laboratory of Professor Emeritus George Ordal. Dr. Siepmann took a keen interest in organic chemistry and chose to pursue a doctorate in biochemistry at the Medical College of Wisconsin in Milwaukee. Here, Dr. Siepmann studied ATP-dependent protein ubiquitination by utilizing the tools of site-directed mutagenesis to investigate protein-protein interactions in the eukaryotic ubiquitination pathway. Active ubiquitin carrier and charging enzyme levels were detected in various cell lines using tissue culture techniques. The structure of different mutant enzymes was characterized by circular dichroism (CD) and by enzyme-linked assays employing radiolabeled substrates.
As a post-doctoral fellow at the University of Utah Department of Chemistry, Dr. Siepmann used organic synthetic chemistry to design and produce various substrate analogs of taxadiene synthase. By studying the enzymatic mechanism of taxadiene synthase using state-of-the-art rapid quenching techniques, it was hoped that other less toxic forms of taxol could be created through the manipulation of the enzyme's reaction mechanism.
Depth and Breadth of Experience
Dr. Siepmann looked to diversify his experience throughout his career to provide him with a broad experience and allow him to tackle almost any general question from the numerous disparate realms of intellectual property law. Working nearly a decade and a half at various law firms and a major biotechnology company, coupled with a diverse scientific training spanning over thirteen years, well equips Dr. Siepmann to assist with almost any chemical or biology intellectual property issue.