Thomas J. Pienkos

Partner
Thomas Pienkos, SmithAmundsen LLC Photo

Overview

Tom counsels clients on the strategic protection, licensing and enforcement of intellectual property rights both domestically and abroad. His experience includes preparing and prosecuting many U.S. and international patent applications and securing patent rights for clients in relation to a wide variety of technologies, including engine, construction, printing, commercial and residential heating and cooling, and computer-related technologies. Tom has supervised and conducted intellectual property due diligence investigations for corporate mergers, acquisitions and refinancings. He also drafts and negotiates patent license, nondisclosure and joint development agreements.

As a member of the firm’s Intellectual Property Service Group, Tom represents clients in a range of industries, including transportation, commercial and residential kitchen and washroom, technologies, and industrial manufacturing. Tom leads and enjoys participating in patent review committees charged with strategically evaluating inventions for possible patent prosecution.  He advises clients on policing and protecting copyright, trade dress, trade secret and trademark rights. Tom is active in the Wisconsin Intellectual Property Law Association (WIPLA) and the Wisconsin Association of Mutual Insurance Companies (WAMIC), presenting to members regarding developments with Insurance Data Security Model Law.

As a member of the Cryptocurrency, Blockchain and FinTech group, Tom has experience counseling clients in regard to patent and other intellectual property protection, and related contractual issues, in a wide array of software-implemented technologies, including the Internet of Things (IoT), Artificial Intelligence (AI), Machine Learning (ML). Tom is registered to practice as a patent attorney before the U.S. Patent and Trademark Office. He is also a member of the Cybersecurity and Data Privacy Service Group.

Experience

Membership & Involvement

  • Board of Governors: Wisconsin State Bar, representing District 2 (Milwaukee), 2021-2023; State Bar Board of Governors Liaison Public Utilities Section Board, present
  • Intellectual Property Owners Association (IPO): Chair, IP Professionals with Disabilities and Advocates Resource Group of the IPO Diversity & Inclusion Committee, present; Member, International Patent Law & Trade Committee, present; Member, Trade Secrets Committee, present
  • Member: Wisconsin Association of Mutual Insurance Companies (WAMIC); Wisconsin State Bar, Past Member of the Intellectual Property Law Section Board; Knights of Columbus, 4th Degree Member
  • Past President: Wisconsin Intellectual Property Law Association, 2005-2006
  • Past Co-Chair: Licensing Executive Society International, Wisconsin Chapter 

Honors

  • Selected to The Best Lawyers in America© in Patent Law: 2020, 2021, 2022, 2023

Resources & Insights

Alerts

Speaking Engagements

Education

University of Wisconsin Law School, J.D., 1999

University of Notre Dame,  B.S.M.E., 1996, cum laude

Admissions

  • Wisconsin
  • U.S. Patent and Trademark Office 
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