Dr. Tom Paul joined Fulbright & Jaworski L.L.P. in 1986 and is a partner in the firm's Houston office. His practice involves intellectual property law, including patent prosecution, litigation, licensing and due diligence. In the area of patent prosecution and due diligence, he is primarily involved in areas of biotechnology/chemistry, including molecular genetics, transgenic animals, biochemistry, drug and clinical tests and assays. In the area of licensing, he has drafted and negotiated agreements transferring technology both between U.S. corporations, universities and government agencies and between U.S. and foreign corporations and universities for a variety of technologies including life sciences, pharmaceutical, biotechnology and computer software.

His practice generally involves:

• Assisting universities, biopharmaceutical research organizations and companies in management and licensing of their intellectual property portfolio
• Providing formal opinions concerning potential infringement, validity and enforceability of client and third party intellectual property, including studying potential issues raised by new product launches
• Negotiating Software Development Agreements, Security Agreements, Supply Agreements, Research and Development Agreements, joint ventures, Joint Development Agreements, Cost Sharing Agreements, Escrow Agreements, Licensing Agreements and Confidentiality Agreements in various industries
• Performing numerous due diligence analyses for clients in multiple industries

Prior to law school, Tom served as an assistant professor of biophysics and pediatrics at State University of New York at Buffalo from 1977 to 1984. He served as visiting staff consultant for the J.N. Adams Developmental Center, State of New York, Department of Mental Hygiene from 1978 to 1984 and has completed research, teaching and publications on genetics, biochemistry and statistics.

• Major pharmaceutical company in its acquisition of biotechnology drug products and drug discovery tools; responsible for structuring, negotiating and drafting the Technology Transfer Agreement as it related to intellectual property, License Agreement and an Intellectual Property Cross-License Agreement due diligence ($120 million deal)
• Major pharmaceutical company in its sale of its worldwide hematological oncology portfolio; responsible for structuring, negotiating and drafting the License and Asset Purchase Agreement as it related to intellectual property, Distribution and Development Agreement, Supply Agreement and IT Agreements ($2.9 Billion deal)
• Major pharmaceutical company in its development and acquisition of markers and tools to support personalized medicine for its oncology products; responsible for structuring, negotiating and drafting Research Collaboration and License Agreement ($160 million deal)
• Major pharmaceutical company in its settlement of a patent infringement suit; responsible for structuring, negotiating and drafting the Settlement Agreement as it related to intellectual property and a Non-Exclusive License
• Non-profit institute in its obtaining significant research and development funding from a major pharmaceutical company; responsible for structuring, negotiating and drafting Research Collaboration and Option Agreement
• Medium size biotechnology company in its sale to a pharmaceutical company; responsible for structuring, negotiating and drafting the Asset Purchase Agreement as it related to Intellectual Property and supervising provision of due diligence to acquirer
• Major engineering company in its sale of one division; responsible for structuring, and drafting the Asset Purchase Agreement as it related to intellectual property
• Many start-up to mid-level biotech companies on multiple in-licensing and out-licensing agreements and due diligence (drugs, antibodies, gene therapy, biological compounds, medical devices, screening tools, mouse models); includes licensing agreements in the acquisition or divesture of intellectual property rights, Research and Development Agreements, Supply Agreements, Employment Agreements, Consulting Agreements, Material Transfer Agreements and Non-disclosure/confidentiality Agreements
• Medical device company in the acquisition of medical device, including due diligence, structuring, negotiating and drafting agreements related to the acquisition of intellectual property, software and the provision of computer hosting sites
• Major university in the development and spinning off of new companies and transferring of intellectual property to the new companies
• Major oil company review and updated the intellectual property aspects of Joint Venture Agreement
• Personality testing company in their transactions including, Distributor Agreements, Consulting Agreements, Development Agreements and Web Access Agreements
• Manufacturer of both vitamins and nutraceuticals in several licensing, and research and development agreements to expand their product lines, including due diligence
• Several health care providers in structuring, negotiating and drafting agreements related to the outsourcing of various information technology, including patient intake, patient records and billing

• American Intellectual Property Law Association (IIPLA)
• Houston Intellectual Property Law Association (HIPLA)
• American Bar Association
• Texas Bar Association
• Houston Bar Association
• Association of University Technology Managers (AUTM)
• American Association for the Advancement of Science (AAAS)
• University of Houston, former Adjunct Professor
• Texas Technology Transfer Association (T3A), Board of Directors (1995 - 1998)

• "Nuts and Bolts of Intellectual Property - Trade Secrets," Houston Association of Legal Professionals, Houston, Texas, January 7, 2012
• Panelist, "M&A in 2011: Maximizing Value with Effective IP Due Diligence," Fulbright Web Seminar, February 17, 2011
• Lecturer, "Patent Law and Licensing," entrepreneurship course, Rice University Jones School of Business, Houston, Texas, 2004, 2006, 2007, 2009 and 2011
• Moderator, "Managing Patent Portfolios Under Shifting Economic Legal Environments," Fulbright Seminar Series, Houston, Texas, October, 7, 2010
• "Biotechnology Patent Law 101," National Society of Genetic Counselors Conference, Dallas, Texas, 2009
• "Enablement, Written Description, Utility and Patentability," J.A. Kemp Law Firm, London, United Kingdom, February 23, 2007
• Moderator, "The Most Extraordinary Country," Seminar: Doing Business in India, Fulbright Seminar Series, Houston, Texas, February 20, 2007

1987 - J.D., cum laude, University of Houston School of Law
1977 - Ph.D., Medical Genetics, Indiana University
1975 - M.S., Medical Genetics, Indiana University
1970 - B.A., Biology, Carroll College (Montana)

Tom was admitted to practice law in Texas in 1987.  He was also registered to practice before the U.S. Patent and Trademark Office in 1988.  He has been admitted to practice in the Supreme Court of Texas since 1987, and the Federal Circuit, U.S. District Courts Southern, Western, and Northern districts of Texas, District of Delaware.

Tom is board certified by the Diplomat of American Board of Medical Genetics Subspecialty Clinical Biochemical Genetics.

When Tom is not practicing law, he enjoys traveling with his wife, all aspects of photography, cooking for friends and family, and watching professional baseball, soccer and football. 

• Stages Theatre, Board of Directors (2007 - 2010)
  • Executive Committee (2009 - 2011)