Todd A. Ostomel

Todd A. Ostomel

Senior Associate

Todd Ostomel helps inventors protect their patent and trade secret rights in the fields of chemistry, biochemistry, biotechnology, materials science, renewable energy (rechargeable batteries and photovoltaics) and nanotechnology. Todd helps inventors maximize the value of their patent and trade secret rights by building an intellectual property portfolio uniquely tailored to their business goals.

He has experience preparing and prosecuting US and international patent applications for small and large-molecules, pharmaceuticals, diagnostics, chemical processes, crystalline polymorphs, electrochemical devices, inorganic materials, rechargeable batteries, fuel cells, photovoltaics, biofuels, and food products. Todd’s practice focuses on patent prosecution and portfolio management, patent opinions and due diligence.

Todd has a Ph.D. in chemistry and is the inventor of patented wound-healing materials that have been sold worldwide. He also has experience as in-house patent counsel for a start-up developing new electrochemical devices. While in-house, he built and managed a large international patent portfolio covering the company’s core technology, negotiated licensing agreements and performed due diligence. His experience as an inventor and as in-house patent counsel provides Todd with a unique ability to communicate with his clients and advise them at all stages of patent prosecution.

Representative clients include US and non-US universities, start-ups, mid-size and large corporations.

Explore

  • Due diligence for licensing and acquisitions
  • Managing international patent portfolios
  • Novelty analysis
  • Negotiating intellectual property agreements
  • Advising on invention disclosure incentive programs, confidentiality agreements, materials transfer agreements, and trade secret protection

Education

  • University of California, Davis, J.D., 2009
  • University of California, Santa Barbara, Ph.D., 2006
  • University of California at Berkeley, B.S., 2001

Admissions

  • California, 2009
  • U.S. Patent and Trademark Office, 2008

{{insights.date}} {{insights.source}} {{insights.type}}

  • Speaker, “Battery Patent Claims Reciting Scientific Information: The Now Heightened Definiteness Requirement,” PlugVolt July 2017, Battery Seminar, Ann Arbor, Michigan, July 18, 2017.
  • Speaker, “The Heightened Definiteness Requirement and Patent Claims Reciting Scientific Information,” American Chemical Society Meeting, San Francisco, California, April 2017.
  • Speaker, “Patents and Trade Secrets for Grid Storage,” PlugVolt July 2016 Battery Seminar, Detroit, Michigan, July 27, 2016.
  • Speaker, “Challenges & Experiences in Commercializing Materials-Based Technologies,” Licensing Executives Society Annual Meeting, San Francisco, California, October 7, 2014.