Thomas C. "Tom" McDonough 10YEARSAWARDED

Thomas C. "Tom" McDonough

recognized lawyers icon Recognized in Best Lawyers since 2013
Awarded Practice Areas
Trademark Law
Thomas C. "Tom" McDonough
Thomas C. "Tom" McDonough
Chicago, IL
Works at
Neal, Gerber & Eisenberg LLP

50 Best Lawyers awards

Neal, Gerber & Eisenberg LLP logo

Biography

A registered patent attorney with decades of experience, Tom helps domestic and global businesses develop, protect, and manage complex intellectual property portfolios. He has built longstanding client relationships, often spanning 20-30 years, by prioritizing clear communication and ensuring clients feel informed and valued throughout every matter.

Tom’s practice has evolved from litigation to a strong emphasis on patent prosecution and trademark protection, reflecting the growing importance of IP strategy for manufacturing and technology-driven businesses. He negotiates and drafts patent and trademark licenses and transfers, software licenses, non-compete and confidentiality agreements, product development agreements, and joint venture agreements. Tom regularly conducts comprehensive product clearance searches to help clients mitigate risk and make informed decisions.

Serving primarily manufacturing clients, Tom also works with businesses in energy distribution systems, vehicle drive and control systems, and advanced manufacturing technologies. His technical expertise spans mechanical and electromechanical systems, where he has drafted and prosecuted hundreds of patent applications involving:

  • Hydraulic drive systems, transaxles, pumps, motors, and control systems
  • Differentials and gearing systems, vehicle engines, and rail transportation equipment
  • Automotive components and systems, agricultural equipment, and snow throwers
  • Kitchen and household products

Tom’s depth of experience extends to patents related to valves, regulators, and storage systems for alternative fuels and cryogenic liquids, further demonstrating his ability to handle complex technologies across diverse industries.

Clients value Tom’s ability to understand their business goals and deliver efficient, cost-effective strategies for protecting intellectual property. His comprehensive knowledge of IP law enables him to anticipate patent issues and provide practical solutions that align with each client’s objectives.

Works at
Neal, Gerber & Eisenberg LLP

50 Best Lawyers awards

Neal, Gerber & Eisenberg LLP logo

Locations

Education

  • University of Wisconsin–Madison, J.D., graduated 1988
  • University of Illinois at Urbana–Champaign, B.S., graduated 1985

Bar Admissions

  • Illinois, Illinois State Bar Association

Court Admissions

  • U.S. Supreme Court
  • U.S. Court of Appeals for the Federal Circuit
  • U.S. District Court for the Northern District of Illinois
  • U.S. District Court for the Western District of Wisconsin

Regulatory Agencies

  • U.S. Department of Commerce - Patent and Trademark Office

Client Testimonials

Tom is a highly experienced, competent, reliable, cost-effective, and responsive attorney. He has impeccable technical knowledge, business judgment, and personal integrity.

Bruce Beatus (Credit Argricole Asset Management Alternative Investments)

Awards & Focus

Recognized in The Best Lawyers in America® 2027 for work in:
  • Trademark Law
Additional Areas of Practice:
  • Copyright Law
  • Litigation - Intellectual Property
  • Litigation - Patent
  • Patent Law
  • Transportation Law

Additional Information

  • Court Admissions
U.S. Supreme Court
  • U.S. Court of Appeals for the Federal Circuit
  • U.S. District Court for the Northern District of Illinois
  • U.S. District Court for the Western District of Wisconsin
  • Experience
Won summary judgment in a trademark and copyright case for a ball bearing manufacturer in Federal Court in Connecticut. The plaintiff’s trademark claims were found to be barred by laches and the allegedly copied materials were found not protectable under copyright. This decision was affirmed by the Second Circuit Court of Appeals.
  • Was lead counsel in a successful patent interference proceeding at the Board of Patent Appeals and Interferences, where the client was able to invalidate a competitor’s patent. This victory was affirmed by the Court of Appeals for the Federal Circuit.
  • Pivot Point Int’l Inc. v. Charlene Products, Inc., 372 F.3d. 913 (7th Cir. 2005) - represented the plaintiff in one of the leading decisions on the issue of conceptual separability under copyright law where our client’s copyright on a mannequin head was upheld.
  • „Obtained and enforced an ex parte seizure with the United States Marshals against an individual creating and distributing counterfeit diamond certification forms.
  • Represented the plaintiff in a case involving eight patents on hydraulic pump technology; case was favorably settled.
  • Represented a major cell phone manufacturer in a patent case involving camera phones; case was favorably settled.
  • Represented a manufacturer as declaratory judgment plaintiff in a patent case involving truck technology. Case was favorably settled after we prevailed on a key claim construction issue.

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