Thomas C. McThenia, Jr. - Attorney at Law

720 S.W. 2nd Avenue
Suite 106
Gainesville, Florida 32601


P 352-376-6400
F 352-376-6484

301 East Pine Street
Suite 1400
Post Office Box 3068 (32802-3068)
Orlando, Florida 32801

P 407-843-8880
F 407-244-5690
D 407-244-5610

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Biography

Tom is a shareholder in the firm's Orlando and Gainesville offices and practices in the intellectual property (IP), technology, licensing and Internet areas. Tom has divided his career between private law practice and roles as in-house counsel for two global organizations. Tom has enjoyed representing a wide array of clients including multinational corporations, nonprofit and religious organizations, hospital and healthcare systems, universities, start-up and emerging-growth companies, technology and internet companies and individual entrepreneurs.

Tom is a registered patent attorney who handles all areas of intellectual property, including patent and trademark prosecution and opinion work, copyright, and trade secret matters. He provides strategic IP counsel to a variety of clients, including developing corporate IP and technology commercialization strategies, managing global IP Portfolios, conducting IP audits, and managing patent, trademark and copyright portfolios.

Tom has represented clients on all sides of technology transactions, including global licensing, technology and commercial transactions. He has extensive experience structuring and negotiating technology, IP and internet development, licensing and distribution arrangements. By way of examples, Tom oversees the global licensing of intellectual property, digital and media assets for an international non-profit organization.  Tom led a legal team for the development and implementation of informational technology networks and broadcast technology for a new professional sports arena. Tom has handled the legal structuring and negotiation of international enterprise software and technology implementations for multinational corporations.

Tom counsels clients on internet, social media and data protection issues involving the creation, use and distribution of internet technology, content and media, social media and networking legal matters, and data privacy and use issues. He has represented a range of clients in the internet space, from internet companies to content creators and users to commercial clients seeking to use the internet in their own businesses. Tom continues to address new legal issues for emerging technologies such as new uses and technologies for social networking applications, cloud computing and cyberlaw issues.

Tom works regularly on IP and technology components of commercial and corporate transactions in joint development and joint ventures, strategic alliances, due diligence, mergers and acquisitions, corporate formations and financing, and licensing and commercialization. Tom headed the IP efforts for the global acquisition of beverage brands for a client, directed the IP and technology divestiture of a client's internet business unit that researched and developed global internet marketing techniques and strategies and, recently worked on the sale of controlling interest in a client’s pharmacy benefits management business. Tom also represents clients in entertainment matters involving the creation, licensing and distribution of educational, entertainment, media and internet assets.

As in-house counsel, Tom served as patent and technology counsel for The Coca-Cola Co. in Atlanta, Georgia. In that role, he dealt with domestic and significant international matters, such as handling global portfolios and licensing of patent, trademark and copyrighted assets, implementation of a worldwide corporate Enterprise Resource Planning software system, construction of a European manufacturing plant and European headquarters, and complex technology development projects.  Tom also served as in-house counsel for a global nonprofit organization handling Intellectual Property, technology and internet strategy and protection, transactions and licensing along with operational and non-profit legal issues. 

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Background

Tom grew up in Media, Pennsylvania, and attended Duke University, graduating with a bachelor’s of science degree in mechanical engineering. Tom spent several years working with an international nonprofit in the U.S., East Asia and New Zealand before attending law school. Tom attended Washington and Lee University School of Law, and graduated from the University of Virginia with his juris doctor in 1993. Tom has practiced law in Raleigh, North Carolina; Atlanta, Georgia and Charlottesville, Virginia before moving to Orlando in 2002. Tom lectures frequently on IP, technology and internet legal topics, having previously served as an adjunct professor of law at Campbell University School of Law in North Carolina.

Education
  • Duke University, School of Engineering, B.S.E. (mechanical engineering, departmental distinction, 1986)
  • University of Virginia, School of Law, J.D. (1993)
Admissions
  • Florida, 2004
  • Virginia, 2000
  • North Carolina, 1993
  • U.S. District Courts for Middle District of Florida; Eastern, Middle and Western Districts of North Carolina; and Western District of Virginia
  • U.S. Courts of Appeals for 4th Circuit and for Federal Circuit
Professional Associations & Memberships
  • The Florida Bar
    • Business Law Section, Member
  • Orange County Bar Association
    • IP Committee
  • The American Bar Association
    • Cyberlaw Committee
  • Licensing Executives Society
    • Certified Licensing Professional
  • Virginia State Bar
  • North Carolina State Bar
  • Registered Patent Attorney, U.S. Patent and Trademark Office, 1997
  • University of Virginia Alumni Association
  • Duke University Alumni Association
  • ACC (past VP of the Central Florida Chapter) 
Civic
  • University of Florida Levin College of Law, Adjunct Professor
  • Florida Hospital Foundation Cancer Institute Board, Member
  • Central Florida Stem Council
  • Youth baseball and basketball coach
Articles & Publications
  • "For the Unaware, Intellectual Property's ‘Bundle of Rights’ Could Turn Into a Bundle of Trouble," ForwardFlorida, October 13, 2011
Presentations & Seminars
  • "Biotechnology Year End Snapshot," Sid Martin Biotechnology Institute, December 2016
  • GAIN-GrayRobinson Tech Tuesdays, Keynote Speaker, Continuing Monthly Series, Gainesville Area Innovation Network, 2015-2017
  • Presenter, "Intellectual Property Law Topics," Healthbox Studio, Miami, Florida, May 21-22, 2015
  • “Breaking in Through the Cloud: Data Breaches and the Civil Disasters that Follow,” American Bar Association, Business Law Section, 2015 Cyberspace Law Institute and Winter Working Meeting, January 23-24, 2015
  • "Recent IP Cases of Note," The Florida Bar Intellectual Property Committee for Business Law Section, Orlando, Florida, June 26, 2014
  • “Playing the Intellectual Property Game to Win: Tips for Growing Your Business Learned From a Life With Baseball” webinar, Florida Economic Gardening Institute at the University of Central Florida, May 8, 2012
  • “Issues in International Intellectual Property Law,” presented to Orange County Bar Association Intellectual Property Law Committee, April 10, 2012
  • YouTube
  • Twitter
  • Facebook
  • LinkedIn
  • Ingenuity in Action.TM

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