Todd Ostomel helps entrepreneurs and inventors develop patent and trade secret portfolios for protecting and monetizing inventions and ideas in the fields of organic chemistry, inorganic chemistry, materials science and biotechnology.

    Todd focuses on patent prosecution and portfolio management, patent opinions, due diligence, utility and design patent applications, and trade secret counseling. Todd has extensive experience preparing and prosecuting US and international patent applications for small and large molecules, polymorphs, antibody-drug conjugates, ceramics, rechargeable batteries, biofuels, bioinformatics, diagnostic methods, methods of medical treatment, chemical processes, cryptocurrency, LEDs, photovoltaics, food products, energy storage, and machine learning technology. Todd also has extensive experience with trade secret enforcement.

    His clients appreciate his ability to understand the technical details of their inventions as well as the legal issues relevant to their business goals.

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    • Invented and patented wound-healing materials sold worldwide.
    • Served as in-house counsel for an electrochemical device startup.
    • Represented a battery company developing lithium metal anode rechargeable batteries for electric vehicle applications.
    • Represented a battery company developing aluminum metal anode rechargeable batteries for grid storage applications.
    • Represented an electronic device manufacturer developing laser scanning and related technology.
    • Represented a medical diagnostic company developing machine learning analytics.
    • Represented a pharmaceutical company developing antibody-drug conjugates.
    • Represented a pharmaceutical company developing small molecule therapeutics.
    • Represented a startup company developing light-emitting diodes.
    • Conducted due diligence investigations for a multinational corporation acquiring an Asian company, developing hybridization assays for detecting foodborne pathogens.
    • Conducted due diligence investigations for a US company acquiring startup technology.
    • Advised a startup developing agricultural technology.
    • Advised a Silicon Valley incubator on patent 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

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    • "BEST MODE: Did You, or Are You Just Going To, Test that Invention?, IP Tech Blog, June 30, 2021.
    • "BEST MODE: Noncompliance with the Duty of Disclosure is Not an Option," IP Tech Blog, June 2, 2021.
    • "New ITC 337 Investigation Powered by Battery Design Patents," IP Tech Blog, February 4, 2021.
    • "Beware! Inventors Include Those Who Significantly Contributed to a Claimed Invention – Even if their Contribution is Not Recited in the Claim," IP Tech Blog, July 26, 2020.
    • "Are You Protecting All of Your Company’s IP?," IP Tech Blog, February 24, 2019.
    • "Providing Scientific Information in Patents after Nautilus," IP Tech Blog, July 12, 2017.
    • "BASF Wins Big in Battery Battle," IP Tech Blog, December 19, 2016.
    • "The Federal Circuit Clarifies When Claim Scope is Disavowed," IP Tech Blog, October 24, 2016.
    • "Valuable but Unpatentable," IP Tech Blog, April 11, 2016

    • Speaker, “Nuts & Bolts of Intellectual Property Protection for Early-Stage Startups,” UC Davis Venture Catalyst Knowledge Exchange Webinar, January 26, 2021.
    • Speaker, “Patent Insight into Battery Innovation,” Bay Area Battery Summit 2019, SLAC, Menlo Park, California, November 13, 2019.
    • Speaker, “Communicating Science to a Broad Audience,” 2018 STC Directors Meeting, Berkeley, California, August 21-22, 2018.
    • Speaker, “A Portfolio of Protections: Using IP Strategically,” Intellectual Property & the Law 2018 Symposium, Davis, California, April 6, 2018.
    • 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.

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