Complex technology and intellectual property challenges facing businesses today rarely present themselves in a tidy package easily handled by an attorney practicing in only one IP area. Instead, they arrive as complex business-technology problems. How do we protect the company when implementing a new ERP or EHR system? How do we assess and minimize technology and IP risks when buying or financing a company? How do we resolve a threatened infringement suit? What can we do to exploit the competitive advantage afforded by our technology and IP?

To successfully compete in today’s rapidly-changing marketplace, clients need an attorney who is exceptionally knowledgeable in all IP areas – patent, trademark, copyright, trade secret, information technology and licensing – and who has significant experience addressing IP challenges in a wide variety of contexts, such as IT agreements, M&A deals, IP licensing transactions, litigation, bankruptcy, employment IP disputes and technology acquisitions.

Known for his keen intellect and exceptional analytical abilities, Mike’s niche is in the ability to analyze complex technology and IP issues, determine the best path forward, and then clearly communicate the situation’s risks, options and solutions to C-level business leaders. These abilities make Mike the go-to IP lawyer for many public and private companies competing in today’s marketplace.

Mike’s long-term clients include a prominent national utility company, a leading regional healthcare system, one of the world’s largest wallboard manufactures, one of the country’s oldest furniture manufacturers, a publicly-traded water distributor and a leading regional quick service restaurant franchisor/operator.

    Experience

    Any result the lawyer or law firm may have achieved on behalf of clients in other matters does not necessarily indicate similar results can be obtained for other clients.

    • Lead attorney responsible for all IP aspects of a European client’s $2.1 billion acquisition of a US-based global engineering software and consulting company owning over 250 patents and patent applications, 300 trademark registrations and applications, and 200 copyright registrations. Led five-attorney team responsible for IP due diligence, IP purchase agreement provisions and for resolving IP security interest issues.
    • Over 17 years’ experience representing national utilities companies. Drafted and negotiated IP portions of several significant utility company EPC agreements. Drafted and negotiated patent licenses for the construction and operation of a large-scale Integrated Gasification Combined Cycle power plant. Lead attorney of 4-attorney team responsible for drafting and negotiating agreements to procure over $100 million of smart meters over multi-year period. Negotiated and drafted license agreement for a digital control software system for a leading national utility’s nuclear electric generation facilities.
    • Over 15 years’ of experience drafting and negotiating complex, mission-critical IT agreements, including EHR agreements, ERP agreements, point of sale (POS) software licenses and SaaS agreements. Currently serve as primary outside IT counsel to prominent international wallboard and furniture manufacturers. ·
    • Primary IP counsel to publicly-traded water distribution company, from inception through IPO. Successfully prosecuted the company’s patents and trademarks; performed all IP aspects – diligence, drafting and negotiation – of client’s $100 million acquisition of a Canadian vended/bottled water company; drafted and negotiated key supply agreements; and navigated the company through IP disputes.

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    Contact information

    +1 704.350.6303
    mike.tobin@wbd-us.com
    +1 704.338.7803

    Bar admissions

    1997, North Carolina

    Admitted to practice before:

    • United States Patent and Trademark Office

    Education

    • J.D., 1997, Wake Forest University
      • Valedictorian
      • Recipient, A.J. Fletcher Law Scholarship
      • Order of the Coif
      • Wake Forest Law Review
    • M.A., 1988, Georgetown University
    • B.S., 1987, United States Naval Academy
      • With distinction