Thomas R. Stiebel, Partner

Biography

Thomas Stiebel, co-chair of the firm's China Law Group, focuses on China-related transactions where he represents Chinese companies doing business in the U.S., and U.S. companies with business interests in China. He also practices in the firm's Intellectual Property Practice Group. Tom's Chinese clients include large state-owned enterprises as well as public and private entities, principally in the energy, high-technology, pharmaceutical, biotech, real estate, automotive, and manufacturing sectors. He is a listed arbitrator for the China International Economic and Trade Arbitration Commission ("CIETAC"). His most recent China experience includes

  • Representing a Chinese biotechnology company in the acquisition of a U.S. animal feed supplement manufacturer.
  • Representing a Chinese telecom equipment manufacturer in the acquisition of a U.S. -based medical device manufacturer.
  • Conducting and supervising due diligence on a Chinese capital partner and vaccine manufacturer for a joint venture in China to expand the manufacturing and marketing of a U.S. biotechnology company's U.S. FDA approved vaccine and delivery device.
  • Advising Haitong International Holdings Co., Ltd. holding companies on potential overseas/cross border acquisitions.
  • Representing a U.S. veterinary device manufacturer in negotiating manufacturing, distribution, co-development and licensing agreements with Chinese and international partners.
  • Successfully represented a U.S. company in its arbitration/enforcement proceedings in China against a defaulting Chinese company.
  • Advising a Chinese subsidiary of a large international pharmaceutical company on worldwide intellectual property acquisition and protection, including licensing negotiations and right-to-practice and litigation analysis.
  • Representing a Chinese company on U.S. litigation strategies against a U.S. company for the supply of counterfeit goods through its Chinese distributorship.
  • Advising a Chinese biotechnology company on the acquisition of a NASDAQ-traded biotechnology company.
  • Advising a U.S. manufacturer in negotiations of a sales/distribution contract in China with a Chinese state-owned enterprise truck manufacturer.
  • Representing a Chinese imaging company on access to U.S. capital markets.

Additionally in China, Tom assists clients, including numerous multinational companies, in negotiating, establishing, and operating foreign investment enterprises, identifying and evaluating business partners, government relations, and handling multicultural and multijurisdictional legal issues. He is regularly consulted on matters such as corporate matters (including mergers and acquisitions, venture capital and private equity investments, and capital markets), IP protection, technology transfers and licenses, employment, and immigration and labor, as well as regulatory matters related to market access and barriers, government approval and registration, and license/permit requirements.

His recent intellectual property experience includes

  • Patent and IP due diligence related to M&A transactions.
  • Patent preparation/prosecution of inventions related to DNA and peptide sequences, gene therapy, genetic testing, cancer diagnostics, chemotherapeutic agents, antimicrobials, anti-inflammatory agents, vaccines, analgesics, hormone therapy, antiemetics, diuretics, antidepressants, proton pump inhibitors, antibodies, immunoassays, needleless injectors, polymer coatings, combination therapy, drug formulations, drug delivery systems, and medical devices.
  • Counseling and preparing opinions in matters related to patentability, infringement, validity, freedom-to-operate and patent term extension strategies, and claim strategies for listing patents on the FDA's "Orange Book."
  • Counseling related to intellectual property licensing and technology-related agreements.
  • Performing due diligence investigations for transactions involving patents and other intellectual property rights.
  • Developing global patent protection and litigation strategies for new pharmaceutical products.
  • Assisting litigation teams involving Paragraph IV certifications.
  • Representing a worldwide research collaboration between a leading Australian biotechnology company and a German-based pharmaceutical company to develop and commercialize novel compounds for the treatment of viral infections and other diseases.

Legal Services

Education and Honors

  • Northwestern University School of Law (J.D., 1999)
  • St. Louis University (M.S., 1989)
  • Southern Illinois University (B.A., 1986)

Bar Admissions

  • Illinois

Court Admissions

  • U.S. Court of Appeals, Federal Circuit, 2002
  • U.S. Patent and Trademark Office, 2000

Professional and Civic Activities

  • China International Economic and Trade Arbitration Commission ("CIETAC") (Arbitrator)
  • American Bar Association (Member)
  • American Intellectual Property Law Association (Member)
  • Federal Circuit Bar Association (Member)
  • Intellectual Property Owners Association (Member: Arbitration and Mediation Committee)