Marshall, Gerstein & Borun LLP

Representative Experience

• Surgical navigation systems
• Medical devices
• Prosthetic devices
• Optics, including thin film lenses and large format movie cameras
• Liquid crystal displays
• Digital printing systems
• Internet-based software systems
• Distilling systems and petrochemical processing systems
• Industrial mixing equipment
• Commercial food preparation equipment
• Automotive child safety restraint systems
• Steel and concrete industrial processing lines
• Extrusion equipment
• Food storage devices
• Air fragrancing devices
• Vacuum pump technology

• Water filtration systems

Background and Credentials

Thomas Riley has an international practice focused on the preparation and prosecution of patent and trademark applications and counseling regarding patent and trademark clearance, enforcement, and due diligence.  Encompassing a wide range of technology and brand asset planning, development, protection and enforcement, his extensive experience in coordinating large worldwide patent portfolios positions him as a leader to his clients and his peers at the Firm.

Mr. Riley has served as an adjunct professor at Valparaiso University School of Law and DePaul University College of Law where he taught courses in patent prosecution procedure and patent drafting.  Earning a J.D., cum laude from Valparaiso University School of Law, he served as a law review editor and note writer for the Valparaiso University Law Review and as a judicial extern to the Honorable J. Tunheim in the U.S. District Court for the District of Minnesota.  He completed a B.S. in Civil Engineering and a B.S. in Land Surveying Engineering, both from Purdue University. 

Before entering law school, Mr. Riley worked as a structural and construction engineer with Chicago Bridge & Iron in Plainfield, IL and as a marine field surveyor with John E. Chance & Associates located in Houston, TX.

Publications and Speeches

• "U.S. Patent Prosecution, The Duty of Disclosure, and Inequitable Conduct: A Primer for non-US Attorneys in view of Therasense v. Becton, Dickinson." Presentation to the Bavarian section of the Deutsche Vereinigung für Gewerblichen Rechtsschutz und Urheberrecht at the Deutsche Patent- und Markenamt, Munich, Germany, February 8, 2011.
• "Long Awaited Bilski Decision Rejects Claims as Being For an Unpatentable Abstract Idea, Rejects New Broad Categorical Rules as to What Is or Is Not Patentable Subject Matter Under 35 U.S.C. § 101," June 2010.

• "Prosecution History Estoppel: The Choice Between Public Interests and Inventor’s Property Rights," 36 Val. U.L. Rev. 239 (2001).

Community and Professional Involvement

• Chicago Bar Association (CBA)
• Intellectual Property Law Association of Chicago (IPLAC)
• International Trademark Association (INTA)
• Chicago Engineers Foundation, Board of Directors
• German American Chamber of Commerce
• Union League Civic & Arts Foundation, Board of Directors

Short Biography