300 N. LaSalle Street
BM Intercontinental Business Centre
100 Yu Tong Road
Thomas Stiebel, chair of the Firm’s China Law Group and the Chief Representative of the Firm’s Shanghai Representative Office, focuses on China-related transactions representing U.S. clients with business interests in China and Chinese companies doing business in the U.S. He also practices in the Firm’s Intellectual Property Practice Group. In China, Tom assists clients, including numerous multinational companies, in negotiating and 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, immigration and labor, as well as regulatory matters related to market access and barriers, government approval and registration and license/permit requirements. Mr. Stiebel’s Chinese clients include large state-owned enterprises as well as 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”) and the International Arbitration Court of the Wuhan Arbitration Commission (“WIAC”). His most recent China experience includes:
- 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. manufacture 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.
His recent intellectual property experience includes:
- Patent 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.
Education and Honors
- Northwestern University School of Law (J.D., 1999)
- St. Louis University (M.S., 1989)
- Southern Illinois University (B.A., 1986)
U.S. Court of Appeals, Federal Circuit, 2002
U.S. Patent and Trademark Office, 2000
Professional and Civic Activities
- President’s Circle, Chicago Council on Global Affairs (Member).
- China International Economic and Trade Arbitration Commission - “CIETAC” (Arbitrator).
- International Arbitration Court of the Wuhan Arbitration Commission - “WIAC” (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).
- Speaker: 52nd Annual Corporate Counsel Institute, Northwestern University School of Law, Cross-border Activity: A Focus on China, October 3, 2013.
- Speaker: American Chemical Society Presidential Symposium and Workshop on Opportunities and Challenges of U.S.-China Intellectual Property Agreements; 246th ACS National Meeting & Exposition, Indianapolis, Indiana, September 9, 2013.
- Author: Inside the Minds: Defending Intellectual Property Rights Cases in China’s Evolving IP Environment (Inside the Minds), CHAPTER TITLE: Protecting Trade Secrets in China - A Roadmap, Published by Aspatore Books, a Thomson Reuters business, 2013.
- Speaker, “China from the Ground Up: Ideas and Insight to Grow Your Business in China,” Quarles & Brady and PNC Sponsored Event, November 14, 2012.
- Keynote speaker, “Hot Topics in U.S. IP Law,” The 10th Forum on the Protection of Intellectual Property, Wuhan Optics Valley of China, November 2, 2012.
- Panelist, “Navigating the Pitfalls That Occur When Negotiating With Regulators in China,” Minority Corporate Counsel Association (MCCA) 11th Annual CLE Expo, March 21, 2012.
- Quoted, "A New Level of Cooperation Reached in U.S.-China Business, says a U.S. expert," Xinhua News,
February 1, 2011.
- Quoted, “Why China matters,” CNNMoney.com, January 18, 2011.
- Moderator and Panelist, “Drug Approval in China - What You Need to Know to Succeed,” 2010 BIO International Convention: Achieving Regulatory Approval, Chicago, IL, May 2, 2010.
- Speaker, “A Comparison of the Legal and Financial Systems of Shanghai and Chicago, and What the Future Holds,” AllBright Law Office’s 10th Anniversary Celebration Forum on the International Financial Center of Shanghai, Shanghai, China, December 10, 2009.
- Speaker on China’s Third Amendment to the Patent Law and the draft Telecommunications Law during the U.S. - China Legal Exchange, an annual bilateral exchange between the U.S. Department of Commerce's Office of General Counsel and China's Ministry of Commerce’s Department of Treaty and Law. The program provided the U.S. business communities with an opportunity to hear directly from government regulators and Chinese legal experts on important changes to these areas. DOC General Counsel Cameron Kerry and USPTO Deputy Director Sharon Barner hosted the delegation headed by Vice Minister Zhang Qiong of the State Council Legislative Affairs Office, Chicago, Illinois, October 14, 2009.
- Co-author (with Hillary Wucherer and Karen Dickinson), “China’s Unseen Industry: Protecting Yourself Against Counterfeiting,” International Trademark Association Bulletin, Vol. 64, No. 16, September 1, 2009; Reprinted, AFP Exchange, monthly publication of the Association for Finance Professionals, December 1, 2009.
- Speaker and Panelist, Practicing Law in China v. Practicing Law in the U.S.," Comparative Law Panel Discussion, Chicago-Kent College of Law, Chicago, Illinois, April 9, 2009.
- Organizer and presenter, Deriving Value from Intellectual Property: A Workshop in Technology and Entrepreneurship, in collaboration with iBIO/PROPEL, Chicago, Illinois, January 16, 2008.
- Invited by Robert C. Cresanti, under Secretary for Technology, U.S. Department of Commerce, to participate in a roundtable discussion hosted by the University of Illinois and the U.S. Department of Commerce directed to identification of barriers and solutions to nanotechnology commercialization, Chicago, Illinois, July 26, 2007.
- Keynote speaker, 2006 Midwest USA Symposium on Science and Engineering, Intellectual Property Protection of Plant Biotechnology: Food, Fuel, and Medicine, Northwestern University, Evanston, Illinois, June 10, 2006.