Thomas J. (Tom) Kowalski is a seasoned registered U.S. patent attorney, a partner in the firm’s New York (Broadway) office and a member of the firm’s Intellectual Property and Life Sciences groups. His practice includes biotechnology, chemical and medical apparatus litigation/contentious matters, patent prosecution, licensing, investor due diligence, and counseling, and litigation, with extensive experience in matters of personal and personalized medicine, genetics and genetic engineering (e.g., CRISPR, TALES/TALENS, zinc fingers, siRNA, and RNAi), plant varieties and genetically modified plants, biological inventions arising from big data/data mining/AI (including from data from massively parallel sequencing, transcriptome analyses, single cell genomics, cell signatures and the various “Seq” tools, e.g., “DropSeq,” “RNASeq” and “PerturbSeq”), virology, immunology, antibodies, vaccinology, T-cell receptors, cell-based therapies such as tumor infiltrating lymphocytes, biologics, pharmaceuticals, medicinal chemistry, crystallography and small molecules, amongst other fields of biotechnology and chemistry. Mr. Kowalski also represents his clients in procuring and enforcing trademarks and design patent rights. He obtains trademark and design patent protection domestically and worldwide, and he enforces trademark rights and defends clients accused of trademark infringement in the United States. He also actively works with clients on strategies to avoid litigation, clear out the IP underbrush that impedes passage through IP thickets, and maximize patent portfolios and investor funding.
Mr. Kowalski received an American Chemistry Society Certified B.S. in Chemistry from New York University and a J.D., with honors, from St. John's University School of Law.
In fulfilling the requirements for American Chemistry Society certification, Mr. Kowalski extensively studied graduate biochemistry, graduate inorganic chemistry, genetics, and computer science; and conducted laboratory research (a joint project amongst NYU (in the laboratory of Yorke E. Rhodes, Ph.D.), Columbia University and The NASA Goddard Institute for Space Studies (under Carl A. Gottlieb, Ph.D.)).
Also while studying at NYU, he was awarded a National Science Foundation Undergraduate Research Participant (NSF-URP) Grant and performed laboratory research at Hunter College, City University of New York (in the laboratory of Joseph J. Dannenberg, Ph.D.). Results of this research were published in the Journal of Organic Chemistry (J. J. Dannenberg, J. K. Barton, B. Bunch, B. J. Goldberg and T. Kowalski, "Trifluoroacetolysis of optically active 2-butyl tosylate," J. Org. Chem. 1983, 48, 24, 4524-4527, https://doi.org/10.1021/jo00172a016).
Mr. Kowalski holds a number of professional appointments and affiliations including as a faculty member of the Practising Law Institute, a member of the editorial boards of Pharmaceutical Patent Analyst and Journal of Commercial Biotechnology, and an editorial advisor for Intellectual Property for Nature Biotechnology.
Mr. Kowalski has extensive international experience and has appeared before courts and in proceedings throughout the world, including London, England; The Hague, Netherlands; Dusseldorf, Mannheim and Munich, Germany; Vienna, Austria; Tokyo, Japan; Rio de Janeiro, Brazil; and Melbourne and Canberra, Australia.
Areas of Practice
Intellectual Property Law
Inter Partes Proceedings
Appellate IP Advocacy
Represented Pentraxin Therapeutics Limited, with respect to the inventions of Sir Mark Pepys including those out-licensed to GlaxoSmithKline (GSK), see, e.g., US Patents 9,192,668 and 7,910,106, entitled “Combinations of SAP depleting agents and anti-SAP antibodies”; US Patent 8,236,984, entitled “Compound and use thereof in the treatment of amyloidosis”; US Patents 8,173,694 and 7,691,897 entitled “Therapeutic agent”; US Patents 8,039,222, 7,615,543, and 7,390,795 entitled “Treatment and prevention of tissue damage”; and US Patent 7,659,299 entitled “Compounds inhibiting the binding of sap for treating osteoarthritis”.
Represented The University of Edinburgh and the Wellcome Trust with respect to the inventions of Brian Robert Walker, Christopher Richard Watkin Edwards, and Jonathan Robert Seckl, see, e.g., US Patent 7,790,706 entitled “Treatment of inflammation with 5α reduced metabolites” and US Patents 7,129,231, 7,122,532, 7,122,531, 7,087,400, 6,946,487, 6,838,253, and 6,368,816 entitled “Regulation of intracellular glucocorticoid concentrations”.
- Prosecuted patents in the field of plant genetics and biology (including traditional breeding) for Rijk Zwaan.
- Represented a biomedical and genomic research center in preparing and prosecuting patent applications and strategic counseling in obtaining allowance and grant and as to third party portfolios and contentious matters.
- Represented Merial, Inc. in a contentious matter: the offense of a patent opposition / nullity brought by Merial Inc. against Intervet International B.V. to clear away an invalid patent.
- Represented a leader in T-cell therapy in patent prosecution, licensing counseling, and strategy including as to clearing away third party invalid patent through ex parte means that avoided contentious matters.
- New York
- U.S. Patent and Trademark Office
- U.S. District Court for the Southern District of New York
- U.S. District Court for the Eastern District of New York
- U.S. District Court for the Western District of New York
- U.S. Court of Appeals for the Federal Circuit
- Supreme Court of the United States
- St. John's University School of Law, J.D., cum laude, 1986
- New York University, B.S., Chemistry, 1982
Duane Morris LLP
- Partner, 2018-present
Vedder Price PC
- Partner, 2010-2018
Frommer Lawrence & Haug LLP
- Partner, 1997-2010
Curtis, Morris & Safford PC
- Partner, 1991-1997
Wyatt Gerber Burke & Badie
- Associate, 1989-1991
Brooks Haidt Haffner & Delahunty
- Associate, 1986-1989
Honors and Awards
New York Law Journal 2019 (inaugural list) New York Trailblazer
Listed in LMG Life Sciences Intellectual Property Stars, 2018-2021
Listed in New York Super Lawyers, 2006-2009, 2014-2019
Listed in Who’s Who Legal, 2010-2011 and 2011-2012
AV Preeminent® Peer Review Rated by Martindale-Hubbell®
- Co-author, "Paying for Your Delay: Application of Prosecution Laches Can Render Issued Patents Unenforceable," Duane Morris Alert, August 17, 2021
- Co-author, "Sharing the Blame: Parent Company Can Still Be on the Hook for Subsidiary's Alleged Infringement," Duane Morris Alert, May 25, 2021
- Quoted, "Inside the Biden Administration’s Support for a Vaccine Patent Waiver," MM+M, May 10, 2021
- Quoted, "U.S. Move to Loosen Vaccine Patents Will Draw Drug Companies to Bargain," Reuters, May 7, 2021
- Co-author, "Texas Court Will Not Delay In-Person Trial to Permit Vaccination of Participants," Duane Morris Alert, March 22, 2021
- Co-author, "Who Watches the Watchmen? Supreme Court to Decide Fate of Administrative Patent Judge Appointments," Duane Morris Alert, March 8, 2021
- Co-author, "Forum Selection Clause Held Inapplicable for Precluding Inter Partes Review Before the Patent and Trial Appeal Board," Duane Morris Alert, February 8, 2021
- Co-author, "Patent-Eligible Subject Matter in Biotech Should Recite More Than a 'Telescope'," Duane Morris Alert, December 8, 2020; reprinted in Intellectual Property & Technology Law Journal, March 2021
- Co-author, "Playing Your Cards Right: Arguments Against Obviousness Can Be Detrimental for Satisfying the Written Description Requirement," Intellectual Property & Technology Law Journal, October 2020
- Co-author, "Playing Your Cards Right: Arguments Against Obviousness Can Be Detrimental for Satisfying the Written Description Requirement," Duane Morris Alert, July 2, 2020
- Co-author, "The Capricious and Ever-Changing Nature of IP Practice Under COVID-19: Deadline Extensions, Sometimes with a Catch, and Ungracious Grace Periods," Duane Morris Alert, May 4, 2020
- Co-author, "Numerical Ranges: More Than Just Endpoints in Patent Process," Duane Morris Alert, February 14, 2020
Co-Author, "Revised Eligibility Guidelines for Patentable Subject Matter," National Law Review, December 18, 2014
Co-Author, "Uncertain Times for Biotech and Pharma Patents," National Law Review, October 23, 2014
Co-Author, "Federal Circuit Shears Hopes for Patent on "Dolly" the Sheep: Holding Clones Are Natural Products and Not Patent Eligible Subject Matter," National Law Review, May 9, 2014
Co-Author, "Guidelines for Patentable Subject Matter Eligibility," National Law Review, March 9, 2014
Co-Author, "How to Manage Collaborative Inventions," INSIDE, the newsletter of the Corporate Counsel Section of the New York State Bar Association (NYSBA), 2013
"Preparing for Full Implementation of the America Invents Act," Vedder Price Newsletter/Bulletin, 2013
"US Patent Law and the Attorney-Client Privilege," The Pharmaceutical Patent Analyst, 2013
"Bowman v. Monsanto: The Supreme Court Got It Right on the Law and the Science But Is the Unanimous Decision Belied by the Ultimate Paragraph?," NYIPLA Bulletin, April/May 2013
"Supreme Court Sides with Monsanto on Issue of Patent Protection for Genetically Modified Seeds; Ruling Is a Major Victory for the Biotechnology Industry," Vedder Price Newsletter/Bulletin, 2013
Selected Speaking Engagements
- Speaker, "Dean’s Hour: Plant Inventions in Everyday Life," Nassau County Bar Association CLE, November 4, 2021
- Speaker, "Biologics: Where Are We Now?" IP Life Sciences Conference, October 12, 2021
- Speaker, "Odds and Sods – The Importance of Plant Inventions to Everyday Life," Intellectual Property Law Committee, Nassau County Bar Association, September 23, 2021
- Speaker, "19th Advanced Summit on Life Sciences Patents," American Conference Institute, Webinar, July 21-22, 2021
- Presenter, "Conducting the Examiner Interview" and "Patent Amendment Writing," Practising Law Institute's Patent Fundamentals Bootcamp 2021, June 3, 2021
- Presenter, "Tensions Between Nonobviousness and Written Description in U.S. Patent Law," Duane Morris LLP, Webinar, October 27, 2020
- Speaker, "18th Advanced Summit on Life Science Patents," American Conference Institute, New York, August 4-6, 2020
- Speaker, "US Patent-Eligible Subject Matter – Latest Thinking," Chartered Institute of Patent Attorneys (CIPA), Webinar, July 2, 2020
- Speaker, "Entering the U.S. Market for European Pharma: Essential IP and Regulatory Considerations," Duane Morris Webinar, June 23, 2020
Co-Chair, "Patent Fundamentals Bootcamp 2020: An Introduction to Patent Drafting, Prosecution, and Litigation," Practising Law Institute Webinar, June 2-4, 2020
- Speaker, "CRISPR: What Is It and Why Should I Care?," Duane Morris and LES Chicago Webinar, May 14, 2020
Moderator, "Building, Managing and Maintaining a Strong IP Department," MIP European Patent USA Forum 2019, New York, New York, December 2019
Invited Speaker, "Antibody Patent Review: Global Perspectives on Enhancing Biologic Assets Protections," ACI’s Third Annual Advanced Summit on Life Sciences Patents, New York, New York, May 17, 2019
Co-Chair, "PLI Fundamentals of Patent Prosecution 2019: A Boot Camp for Claim Drafting & Amendment Writing," Practising Law Institute, New York, New York, June 2019
Moderator, "Don’t Get Too Close to the Edge: What Life Science Companies Need to Know About Managing Standards Setting and Open Source Risks," AIPLA Midwinter Institute, Tampa, Florida, February 1, 2019
Co-Chair, "PLI Fundamentals of Patent Prosecution 2018: A Boot Camp for Claim Drafting & Amendment Writing, Practising Law Institute," New York, New York, June 2018
Organizer, "Procedures Before the European Patent Office (EPO): Changes and Challenges for U.S. Applicants," Webinar, September 2018
Invited Speaker, "Legal Certainty at an Affordable Price – the European Opposition Procedure," BIO, Boston, Massachusetts, June 2018
Invited Speaker, "East of England Meeting," Chartered Institute of Patent Attorneys (UK), US Updates, Cambridge, UK, March 2018
Invited Speaker, "European Patent Office: Subject Matter Eligibility Under 35 U.S.C. § 101," Munich, The Hague, February 2017
Invited Speaker, "Walking the Line: Ethical Issues in Patent Law & Social Media," AIPLA Webinar, December 2016
Invited Speaker, "PLI Fundamentals of Patent Prosecution 2016: A Boot Camp for Claim Drafting & Amendment Writing," Practising Law Institute, New York, June 15-17, 2016
Invited Speaker, "The 101 Issue: Patent Eligibility in the United States - Should Europe Fear the US System?" C5's 8th Conference on Pharma & Biotech Patent Litigation, Amsterdam, March 15, 2016
Invited Speaker, Vedder Price IP Symposium Webinar with European Patent Office Representatives, New York, October 2015
Invited Speaker, Broad Symposium at the Japan Patent Office, Tokyo, November 2015
Invited Speaker, Broad Symposium for Harvard & MIT alumni in Japan, Tokyo, November 2015
Invited Speaker, Broad Symposium at the Chinese Patent Office, Beijing, November 2015
Invited Speaker, Broad Symposium at Tsinghau University, Beijing, November 2015
Invited Speaker, Broad Symposium for Harvard & MIT alumni, Singapore, November 2015
Invited Speaker, PLI Fundamentals of Patent Prosecution 2015: A Boot Camp for Claim Drafting & Amendment Writing, Practising Law Institute, New York, June 2015
Invited Speaker, Broad Symposium, Cambridge, Massachusetts, April 27-29, 2016
Invited Speaker, PLI Fundamentals of Patent Prosecution 2014: A Boot Camp for Claim Drafting & Amendment Writing, Practising Law Institute, New York, June 2014
- Speaker, "Biologics: Where Are We Now?" IP Life Sciences Conference, New York City, October 12, 2013