Thomas Motes
Morgantown,WV
Summary
Strategic Counselor with expertise in complex legal frameworks, ensuring high productivity and efficiency. Specialized in contract negotiation, intellectual property law, and compliance management. Proven ability to leverage analytical thinking and problem-solving skills to meet organizational goals.
Overview
4
4
years of professional experience
2
2
Certifications
Work History
Associate General Counsel for Intellectual Property
West Virginia University
Morgantown, WV
07.2024 - Current
- Negotiate and review intellectual property terms within research-related agreements.
- Manage licensing, monetization, and collaboration agreements for university intellectual property through the WVU Office of Innovation and Commercialization.
- Evaluate university-developed technologies to determine optimal intellectual property protection strategies, and identify viable commercialization opportunities.
- Provide strategic legal counsel on intellectual property matters across diverse high-tech sectors, including Artificial Intelligence (AI) utilization, software development, industrial management systems, and biotechnologies.
- Generate investment documents for Vantage Venture Incubator, and provide legal counsel to the investment committee.
- Analyze the unique legal issues presented by novel university initiatives, and draft custom agreements to effectuate client needs.
Associate
Jackson Kelly PLLC
Morgantown, WV
03.2023 - 07.2024
- Consulting clients regarding patentability, performing infringement analysis, performing freedom-to-operate analysis, and providing counsel to resolve disputes.
- Drafting transactional agreements and associated documents.
Associate Patent Attorney
Brooks, Cameron & Huebsch, PLLC
Minneapolis, MN
09.2021 - 02.2022
- Managed U.S. prosecution of original and continuing applications, including responses to office actions, and provided recommendations to in-house counsel
- Guided PCT national stage filings and issued guidance instructions for foreign jurisdictions.
- Focused on technology areas such as computer memory, semiconductors, artificial intelligence, neural networks, blockchain applications, embedded sensors, and secure transactions.
Education
J.D. -
West Virginia University College of Law
Morgantown, WV01-2021
Bachelor of Science - Biochemistry
West Virginia University
Morgantown, WV01-2013
Skills
- Intellectual property management
- Licensing agreements and negotiations
- Patent prosecution and analysis
- Freedom to operate assessments
- Commercialization counseling
- Legal research and consultation
- Problem solving techniques
- Effective communication skills
- Strategic thinking
Certification
West Virginia State Bar No. 14086
Affiliations
Member, Pittsburgh Intellectual Property Law Association (PIPLA)
Timeline
Associate General Counsel for Intellectual Property
West Virginia University
07.2024 - Current
Associate
Jackson Kelly PLLC
03.2023 - 07.2024
Associate Patent Attorney
Brooks, Cameron & Huebsch, PLLC
09.2021 - 02.2022
J.D. -
West Virginia University College of Law
Bachelor of Science - Biochemistry
West Virginia University