Thomas C. McThenia, Jr. Attorney At Law

Tom is a shareholder in the firm's Orlando and Gainesville offices and practices across intellectual property (IP), technology, licensing, commercial transactions and cyber law. Having 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, consumer products companies, nonprofit and religious organizations, hospital and healthcare systems, universities, start-up and emerging-growth companies, technology and internet companies and individual entrepreneurs.

In addition to being a registered patent attorney, Tom handles all areas of intellectual property, including trademark and patent practice 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 trademark, patent and copyright Portfolios, and conducting IP due diligence and assessments. Tom enjoys working on consumer product development issues such as product development, design and utility patent protection, trademark, copyright, social media and internet issues.

Tom has represented clients on all sides of technology transactions, including global licensing, technology development, implementation, and integrations. 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, served as the lead lawyer on global ERP implementation for a major company and its affiliated manufacturing units and 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, cyber law, and data protection issues. He has represented a range of clients in the internet space since the 1990s, including internet companies, investors, content creators, distributors, and commercial users. Tom continues to address emerging technologies, cloud computing, social media, and cyber law 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.

Tom lectures frequently on IP, technology, and internet legal topics. He has taught intellectual property law, and patent and trademark practice as an adjunct professor of law at the University of Florida Levin College of Law, and the Campbell University School of Law in North Carolina.

• Background

  Tom grew up in Media, Pennsylvania, and attended Duke University, graduating with a degree in mechanical engineering. Tom spent several years working with an international nonprofit in the U.S. and traveling to Asia and New Zealand before attending law school. Tom attended Washington and Lee University and graduated from the University of Virginia with his juris doctor in 1993. Tom practiced law in Raleigh, North Carolina, Atlanta, Georgia, and Charlottesville, Virginia before moving to Orlando in 2002. 

• Insights
  • “2024: Intellectual Property and AI in Public Art," 26th Annual Florida Association of Public Art Professionals (FAPAP) Conference, April 26, 2024
  • Speaker, Intellectual Property, Canada-Florida Chamber of Commerce 2024 Florida Trade Mission, February 7, 2024
  • "Protecting Your IP and AI: Strategies and Considerations for Venture-Stage Companies," 2024 Florida Venture Capital Conference, February 1, 2024
  • "IP Fundamentals and Considerations When Developing Your Product," International Beauty Association, April 14, 2022
  • "The Cannabis Industry is Bigger Than You Think," 30th Anniversary Florida Venture Capital Conference, March 4, 2021
  • "Cybersecurity in M&A and Commercial Transactions," Aon and GrayRobinson Webinar, March 3, 2021
  • "The Cannabis Industry is Bigger Than You Think," 30th Annual Florida Venture Capital Conference, March 3-4, 2021
  • "Re-Opening Your Religious Organization: Preparing for New Ways of Worship and Service," COVID-19 Conversations Webinar Series, June 23, 2020
  • "Intellectual Property and Technology Rights in the COVID-19 Era: The View From Behind the Mask," COVID-19 Conversations Webinar Series, June 18, 2020
  • "CARES Act Guidance from Local Experts," Greater Gainesville Chamber webinar, April 17, 2020
  • "A 2019 Cybersecurity Legal Update," ITPro.TV, April 2019 
  • "Biotechnology Year End Snapshot," Sid Martin Biotechnology Institute, December 2016
  • GAIN-GrayRobinson Tech Tuesdays, Keynote Speaker, Continuing Monthly Series, Gainesville Area Innovation Network
  • 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
  • "Changes in the Global Market – Kirtsaeng v. John Wiley and Sons,"  The Florida Bar Entertainment, Arts and Sports Law Section, University of Central Florida, Orlando, Florida, March 28, 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
• Media
  • "For the Unaware, Intellectual Property's ‘Bundle of Rights’ Could Turn Into a Bundle of Trouble," ForwardFlorida, October 13, 2011
  • "A Review of Copyright and the Internet," Campbell Law Review, January 1998
• Affiliations
  • The Florida Bar
    • Business Law Section, Member
  • The American Bar Association
    • Cyberlaw Committee
  • Employment Law Alliance
    • Intellectual Property Group Co-Chair
  • Licensing Executives Society
  • ACC (past VP of the Central Florida Chapter)
  • Florida Venture Forum, Board of Directors 
• Civic
  • Adjunct Professor of Law – University of Florida Levin College of Law (Patent Law, Trademark Law, Patent Practice)
  • Florida Hospital Foundation Cancer Institute Board, Former Member
  • Youth baseball and basketball coach, retired 
• Credentials
  • J.D., University of Virginia School of Law, 1993
  • B.S.E., Duke University School of Engineering, departmental distinction, 1986
• 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
  • Registered Patent Attorney, U.S. Patent and Trademark Office, 1997