Tom Adolph

Thomas H. "Tom" Adolph is an intellectual property attorney who handles complex transactions and litigation.  He has been practicing law in Houston for more than 36 years.

Mr. Adolph has handled major patent infringement, trademark infringement, copyright infringement, and trade secret actions in federal court in Texas, Delaware, Oklahoma, Michigan, and Virginia. He also has handled International Trade Commission (ITC) matters, including TEO hearings.

He has wide experience in infringement and validity opinions, and he regularly helps clients develop strategies to avoid litigation or improve litigation posture. Mr. Adolph helps clients protect and monetize their intellectual property by preparing and negotiating licenses and agreements and by facilitating transactions. He regularly handles:

•development agreements
•franchise agreements
•escrow agreements
•industry standards
•corporate documents
•mergers and acquisitions
•employment agreements
•consultant agreements
•research and development agreements
•security agreements

Mr. Adolph has worked with both large and small organizations, including established companies, start-ups, universities, and hospitals. He has extensive experience representing clients in the following industries:

•oil field products and services
•technology and electronics
•medical devices
•real estate
•geophysical services

Representative Matters

•Represented a major chemical company in a metallocene catalyst patent infringement suit
•Represented a major chemical company in an encapsulated breaker patent infringement suit
•Handled enforcement of a non-compete agreement in GPS technology for a GPS technology company
•Handled patent, trademark, and copyright infringement matters for a software company
•Represented a communications technology company in trade secret litigation
•Provided general legal counsel and handled licensing, development, and service agreements for a GPS technology company
•Provided IP counseling for a technology research and development venture
•Developed licensing and consulting agreements for a medical school
•Developed licensing and development agreements for a real estate development firm
•Handled trademark litigation and licensing for a sports franchise

Practice Areas
Intellectual Property Licenses and Other Transactions
Intellectual Property Litigation
General Civil Transactions
General Civil Litigation

B.A., magna cum laude, Rice University (TX)
J.D., Columbia University School of Law, Stone Scholar

Bar Admissions
1981, Texas

Court Admissions
•United States Supreme Court
•United States Court of Appeals for the Fifth Circuit
•United States Court of Appeals For the Federal Circuit
•United States District Court for the Southern, Northern, Eastern, and Western Districts of Texas

Organization Membership
Mr. Adolph is a member of the State Bar of Texas and served on the Texas Bar Association Committee for Pro Bono Service to the Poor for a two-year term. He is a member of the Advisory Council for the University of Houston Intellectual Property and Information Law Institute.

Community Involvement
Mr. Adolph served as chair of the Houston Young Lawyer's Association Child Abuse and Adoption Committee for 17 years, and he was cited as committee chair of the year for more than ten years. He represents Strake Jesuit College Preparatory and the Jesuit Volunteer Corps: South, and has in the past represented Covenant House and other charities.

Peer Recognition
Mr. Adolph was named a "Super Lawyer" (2005 - 2006) by Thomson Reuters, and he is AV-rated by Martindale-Hubbell.

Speeches / Presentations
Mr. Adolph is a frequent speaker on IP litigation tactics, IP licensing, IP law, and ethics.

Some of his articles and speeches include:

•IP Litigation Insider - July 2011
•How Far Offshore Does U.S. Patent Law Reach? An Offshore Patent Loophole Big Enough to Sail a (Survey) Ship Through
•IP Litigation Insider - September 2010
•EDTX, Patent Plaintiffs, and Law Firms 2010
•A New and Troubling Decision for Patent Owners 2010
•IP Litigation Insider - September 2009
•Top Ten Patent Cases 2009
•IP Litigation Insider - March 2009
•"Ten IP Things You Can Do Without an IP Attorney," November 2007
•"I just received a patent notice letter! What do I do now?," Houston Business Journal, October 2007
•"IP and the Internet," UH Small Business Administration, September 2007
•"A Change in Patent Law — KSR v. Teleflex," ACCA Newsletter, June 2007
•"Ethics in Negotiations," UT Technology Seminar, May 2007
•"Intellectual Property Litigation," Houston Bar Association CLE, May 2007
•"Don't Mess With Me," The Press & Journal, May 2007
•"US Patent Litigation and UK Companies," Petroleum Review, March 2007
•"Computer Law Update," Infringement, Reverse Engineering, and Antitrust Issues, Price Waterhouse Seminar, Tucson, Arizona, February 1993; and "Intellectual Property Litigation," Houston Bar Association, May 2007.
•"Common Mistakes in IP", Houston Business Journal, November 2006
•"Ethics in Negotiations," UT Patent Law Seminar, October 2006
•"Keeping Business First," Aspatore - Inside the Minds series, August 2006
•"Essentials for Software Agreements," Houston Business Journal, April 2006
•Open Source and Mozilla, November 2005
•"Email Privacy and Litigation Discovery," Houston Business Journal, October 2005
•"IP for Non-IP Lawyers," Texas State Bar Advanced Civil Litigation Fall 2005
•"Ethics in License Negotiations," HIPLA-UH IP Seminar 2005
•"Strategies and Ethical Issues in Pre-litigation Patent Communications," UTCLE Advanced Patent Law Institute, October 2003
•"Ethics Issues in Licensing," PLI, Understanding the IP License 2003
•"The Law Concerning Markman Hearings," Southwest Legal Foundation, Dallas, November 2001
•"E-Mail: Privacy Rights and Discovery Issues," 10th Annual Computer and Information Law Institute, Texas Institute of Continuing Legal Education, Dallas, September 1996
•"Common Misperceptions and Mistakes in Intellectual Property and Software Licensing," Society for Software Quality, Houston, August 1996
•"Trying Intellectual Property Cases Before a Jury," Litigating Technology Cases Conference, Dallas, September 1995
•"Drafting Licenses From a Litigation Perspective," 9th Annual Computer and Information Law Institute, Texas Institute of Continuing Legal Education, Dallas, September 1995
•Trade Secrets and Non-compete Agreements
•KSR Strikes Again
•Interest Rate Limits for Late Payment of IP License Fees and Royalties
•When Should I Seek Advice Of Counsel on Patent Infringement or Validity?
•Keeping Perspective When an Architect Threatens a Copyright Infringement Suit
•IP Basics
•Ethics in Negotiations
•Patent Notice Letter Demands Legal Counsel and a Fast Response
•Don't mess with me, man -- the US IP minefield
•US Patent Litigation and UK Companies
•I Just Received a Patent Notice Letter! What Do I Do Now?
•Some Current Patent Infringement Case Statistics
•The Importance of a Software Audit and How to Respond to the BSA
•The Most Common Custom Software Legal Mistake

Contact Tom Adolph