M. Todd Hales

M. Todd Hales

Associate

Orange County
T: +1 949 757 7126
F: +1 949 851 9348

thales@mwe.com

Todd Hales practices in the Orange County office and is a member of the Intellectual Property, Media & Technology Department.  His practice involves all aspects of intellectual property law with a focus on strategic intellectual property portfolio management and counseling.

Todd works closely with a variety of clients in the development and management of their IP portfolios by helping them identify and protect key technologies and innovations through careful selection of domestic and foreign protection and enforcement strategies.  His practice also involves conducting due diligence investigations in connection with funding, acquisition, and merger transactions, preparation of legal opinions on patent validity, infringement, and noninfringement, and preparing portfolio and landscape evaluations and prelitigation analyses.  Todd also advises clients on employment agreements and invention ownership, nondisclosure agreements, assignment of IP rights, and joint development agreements.

His technical experience includes representation of individuals and companies in a wide range of technologies.  In medical device and life sciences, Todd’s technical experience includes ophthalmology, cardiology, urology, gastroenterology, neurology, pulmonology, radiology, and otolaryngology.  His experience also includes computer hardware systems, software systems and architecture, networking technologies, environmental technologies, aerospace, sports equipment, construction systems and tools, mechanical and electro-mechanical devices and systems, and optical technologies.

Representative Experience

  • Represented ophthalmic medical device company in development of IP portfolio and during due diligence for $40M investment in company.
  • Represented environmental technology turbine company in development of IP portfolio.
  • Represented electrical stimulation therapy company in development of IP portfolio and during due diligence for $20M investment in company.
  • Represented surgical device company during due diligence and $5M sale of IP.
  • Represented ophthalmic medical device company in acquisition of competitor for $10M.
  • Represented medical device company in development of IP portfolio and during rounds of financing totaling $22M.

While earning his degree in mechanical engineering with a minor in physics from Brigham Young University, Todd was inducted into Tau Beta Pi Engineering Honor Society.  He later earned his J.D. from Brigham Young University, where he served as executive editor of the BYU Law Review

Todd is admitted to the California State Bar and is a registered patent attorney with the United States Patent and Trademark Office.  He has lectured on several occasions in public and private fora regarding intellectual property portfolio strategy and management.  He is currently Chairman, and previously Vice-Chair and Program Director, of the Intellectual Property Section of the Orange County Bar Association.  Todd is also a member of the American Intellectual Property Law Association and the Orange County chapter of the J. Reuben Clark Law Society.

Education

  • Brigham Young University Law School, J.D., 2003
  • Brigham Young University, B.S.M.E. (Tau Beta Pi), 2000

McDermott Will & Emery

McDermott Will and Emery