Thomas M. Bonacci - Non-equity Shareholder

Mr. Bonacci’s practice currently emphasizes the preparation and prosecution of patent and trademark applications for filing in the United States and in foreign countries.

Prior to the study and practice of law, Mr. Bonacci had a successful career within the computer, information, and data communications industry. Mr. Bonacci worked as Senior Software Engineer/Computer Scientist for Ascend Communications, and then with Lucent Technologies/Bell Laboratories after its merger with Ascend Communications. While there he worked on internet transport protocols and data communication technologies.

Mr. Bonacci graduated from the University of Utah S.J. Quinney College of Law with Highest Honors, Order of the Coif, and was the recipient of numerous awards, including awards for both Patent and Copyright Law. While in law school, Mr. Bonacci served as a staff editor of the Utah Law Review, and served as a judicial extern for the Honorable Dale A. Kimball, U.S. District Court for the District of Utah. Mr. Bonacci received the 1st Place award in the ASCAP Nathan Burkan Memorial Writing Competition for a paper exploring Internet copyright issues.

Primary Practice Focus

• U.S. Prosecution of IP
  • U. S. Patent Prosecution
  • U. S. Trademark Prosecution

• International Prosecution of IP
  • International Patent Prosecution
  • International Trademark Prosecution

• Licensing, Other Transactional Work & Client Counseling
  • Assistance in Preparing Patent Infringement Opinions
  • Assistance in Due Diligence Investigations of IP Portfolios During Acquisition or Merger Transactions
  • Employment Agreements & Invention Ownership
  • Non-Competition Covenants
  • Non-Disclosure Agreements
  • Assignments

Technical Experience

• Mechanics & Mechanical Engineering
  • Exercise & Training Equipment
  • Sports Equipment
  • Manufacturing Equipment

• Electronics & Electrical Engineering
  • Integrated Circuit Design
  • Electrical & Electromechanical Systems
  • Semiconductors
  • Telecommunications
  • Consumer Electronics

• Computer Systems, Software, E-Commerce, Business Methods & Information Technology
  • Hardware Systems
  • Software Systems and Architecture
  • E-Commerce Technologies and Business Methods
  • Internet Technologies

• Physics & Optics
  • Optical Transducers
  • Lasers

Community Involvement

• Past Chairman, Yalecrest Community Council
• Past President, Utah General Aviation Association
• Past President, Federal Pointe Homeowners’ Association
• Representative, Salt Lake City Council District 5, Salt Lake City Transportation Master Plan Committee

Publications

Thomas M. Bonacci, The Utah Water Conservancy Act Does Not Confer Statutory Standing upon a Water Conservancy District to Press Forfeiture Claims or to Appeal an Administrative Decision of the State Engineer, 1 Utah L. Rev. 334 (2005).

Education

• J.D., Order of the Coif, with Highest Honors, S. J. Quinney College of Law, University of Utah, 2006
• B.S., Mathematics, University of Utah

Professional Admissions and Associations

• Utah State Bar
• Registered Patent Attorney
• American Intellectual Property Law Association (AIPLA)
• American Bar Association
• Utah Supreme Court
• United States District Court for the District of Utah

Other Information of Interest

Law school Honors

• Order of the Coif
• William H. Leary Scholar
• Staff Editor, Utah Law Review
• 1st Place, ASCAP Nathan Burkan Memorial Writing Competition
• Outstanding Achievement Award for Contract Law
• Outstanding Achievement Award for Constitutional Law
• Outstanding Achievement Award for Patent Law
• Outstanding Achievement Award for Judicial Process
• CALI Excellence for the Future Award for Property Law
• CALI Excellence for the Future Award for Copyright Law
• Semi-finalist, 2005 Traynor Moot Court Competition