Thomas A. Franklin

Overview

Tommy Franklin co-chairs the firm’s Electrical & Computer Technologies Practice, one of many leadership positions he has held within the firm since starting nearly two decades ago. He brings a strategic mindset to his client’s most important projects and is adept both at handling complex IP matters as well as developing efficient and scalable systems to grow companies’ IP in a productive and sustainable manner. 

Tommy’s practice focuses on patent prosecution and counseling, but his broad skillset extends far beyond that. He has worked with numerous start-up companies to build impactful patent portfolios serving them well through various exits including acquisition and IPO.  He has helped developed patent portfolios for companies numbering in the thousands of assets, both domestic and abroad. Beyond that, he has extensive experience counseling clients on litigation matters, post-grant proceedings (IPR and re-exam), trade secret protection and policies, licensing deals, diligence (both funder-side and target-side), as well as opinion matters. These experiences inform his approach to advising clients, which focuses on understanding each client’s goals and providing actionable, common-sense advice on how best to use IP to achieve those goals.

On the technical front, Tommy is adept at quickly learning new technologies. His degrees in physics and electrical engineering are put to good use across a range of industries from semiconductor device and manufacturer, medical devices, electromagnetic sensors, optics, lighting circuitry and systems, microelectromechanical systems (MEMS), artificial intelligence, to fluidic systems, and sports-related technology, among others. 

During graduate school, Tommy served as a Research Assistant at the Massachusetts Institute of Technology Laboratory for Electromagnetic and Electronic Systems. His research included investigating magnetic-colloid flow in rotating and oscillating magnetic fields, with a focus on applications to nano-scale devices. He also trained in a microfabrication facility and manufactured devices using microfabrication equipment.

Experience

• Spearheaded development and management of a medical device patent portfolio including thousands of assets.
• Managed a team of over 15 attorneys in prosecuting a patent portfolio of hundreds of assets in the electronics space.
• Counseled an early stage start-up on development of joint research agreements and consulting agreements.
• Led a team of several attorneys in developing non-infringement and invalidity positions for seven patents on behalf of a large consumer electronics company.
• Conducted offensive due diligence on behalf of an investor considering a multi-million dollar investment in a target start-up company.
• Successfully defended diligence by multiple investors on behalf of an early stage start-up company as part of a multi-million dollar investment round.
• Successfully obtained reversal of Patent Office rejections of patent applications on several occasions.
• Developed a trade secret protection plan for an early stage start-up company in the wearables space.
• Developed new onboarding program for integrating and training new hires to firm.

Recognition

Tommy is repeatedly recognized in the IAM Patent 1000: The World’s Leading Patent Professionals. He is also ranked among the top 5% of most active high-tech patent prosecutors—out of 28,843 patent attorneys and agents—in Patexia’s Patent Prosecution Intelligence Report. 

Tommy is a recipient of the Boston College Alumni Scholarship. He is a member of the Order of the Coif and Phi Beta Kappa. For a number of years, he was named to the list of Massachusetts Rising Stars by Super Lawyers. He was also named a BTI client service all star.

Interests

Tommy has a particular interest in leadership development and strategic planning within various types of organizations. He also has an interest in the start-up community, having served as both a judge and mentor for business plan competitions. He is an avid sports fan, particularly interested in new technologies for improving performance in various sports.