Thomas J. Kowalski

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Thomas J. Kowalski is a Registered US Patent Attorney with over 30 years' experience. Mr. Kowalski's practice includes biotech, chemical and medical apparatus litigation, patent prosecution, licensing and counseling. He also represents his clients in procuring and enforcing trademarks. Mr. Kowalski obtains trademark protection domestically and worldwide, and he enforces trademark rights in the United States. He has also defended clients accused of trademark infringement and negotiated agreements to avoid litigation.

In fulfilling the requirements for American Chemistry Society certification, Mr. Kowalski has extensively studied graduate biochemistry, graduate inorganic chemistry, genetics, computer science and 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.). Mr. Kowalski is a member of the editorial board 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 proceedings throughout the world, including London, England; The Hague, Netherlands; Dusseldorf, Mannheim and Munich, Germany; Vienna, Austria; Tokyo, Japan; and Melbourne and Canberra, Australia. Mr. Kowalski received a B.S. from New York University and a J.D., with honors, from St. John's University School of Law.

Areas of Practice

  • Intellectual Property Law

  • Inter Partes Proceedings

  • Appellate IP Advocacy

Representative Matters

  • 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.

Admissions

  • 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

Education

  • St. John's University School of Law, J.D., cum laude, 1986
  • New York University, B.S., Chemistry, 1982

Experience

  • 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

Professional Activities

  • New York State Bar Association

  • American Bar Association

  • Member of the Society of Biochemical Engineers

  • New York Intellectual Property Law Association (NYIPLA)
    - Amicus Brief Committee, 2012-2018

  • The International Association for the Protection of Intellectual Property (AIPPI)

  • Protein Sciences Corporation Advisory Board

  • New Jersey Intellectual Property Law Association (NJIPLA)

  • Journal of Commercial Biotechnology
    - Editorial Board

  • Pharmaceutical Patent Analyst
    - Editorial Board

  • Intellectual Property for Nature Biotechnology
    - Editorial Advisor

  • Practising Law Institute Faculty

  • Future Medicinal Chemistry Peer Reviewer

Honors and Awards

  • Named a Trailblazer by the New York Law Journal, 2019

  • Listed in LMG Life Sciences Intellectual Property Stars, 2018

  • Listed in New York Super Lawyers, 2006-2009, 2014-2018

  • Listed in Who’s Who Legal, 2010-2011  and 2011-2012

  • AV Preeminent® Peer Review Rated by Martindale-Hubbell®

Selected Publications

  • 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

  • Co-author, "A Boot Camp for Claim Drafting & Amendment Writing," Practising Law Institute Fundamentals of Patent Prosecution 2012: America Invents Act: The New "102" and What It Means to You, May-July 2012

  • Author, "Summary of the America Invents Act," National Law Review, April 12, 2012

  • Co-author, "Post-grant review: The good, the bad and the ugly for biotechnology companies," Journal of Commercial Biotechnology, 18(1), 97-99, January 2012

  • Co-Author, "US patent reform 2011: a few things to remember," Pharmaceutical Patent Analyst (2012), 1(2), 121-123

  • Co-author, "Judicial Activism: A Biotech Patent Perspective," Bloomberg Law Reports: Intellectual Property 5(41):35-38, October 6, 2011

  • Co-author, "Leahy-Smith America Invents Act," National Law Review, September 19, 2011

  • Author, "Myriad Federal Circuit Decision Affirms Patentability of Claims to 'Isolated' DNA but Methods Involving Only 'Comparing' or "Analyzing" DNA Sequences Unpatentable and No Declaratory Judgment for Those Who Simply Disagree With Patent," National Law Review, August 4, 2011

  • Author, "Highlights on the Latest Patent Reform Bill," National Law Review, May 25, 2011

  • Co-author, "Intellectual Property Issues for Veterinary Pharmaceuticals in the U.S.," Future Med. Chem. 3(7):847-850, 2011

  • Co-author, Practising Law Institute Fundamentals of Patent Prosecution 2010: A Boot Camp for Claim Drafting & Amendment Writing

  • Co-author, "Patent Prosecution of Biotechnology and Pharmaceutical Patents in a Changing Legal Landscape," Future Med. Chem. 2(1):7-9, 2010

  • Co-author, "Commentary regarding decision in Bilski from a biotech perspective," Journal of Commercial Biotechnology 16:360-361, 2010

  • Co-author, "Commentary regarding decision in Myriad Genetics on 'isolated' DNA claims," Journal of Commercial Biotechnology 16:277–278, 2010

  • Co-author, BIO Show Daily (Article on Patenting), 2008

  • Co-author, "Patentability Issues Surrounding Antivirals," Nature Biotechnology, 25(12):1403-4, 2007

  • Author, "International Trade and Policies for Genetically Modified Products," Journal of Commercial Biotechnology, 13, 137-137, February 22, 2007

  • Co-author, Prosecution of Patent Applications in Fundamentals of Patent Prosecution 2006: A Boot Camp for Claim Drafting & Amendment Writing, PLI Course Handbook, 2006

  • Co-author, "The Patentability of Antibodies in the United States," Nature Biotechnology, 23(9):1079-1080, 2005

  • Co-author, "The Quest for Generic Biotechnology Pharmaceuticals in the USA," Journal of Commercial Biotechnology, 11:271–274, 2005

  • Co-author, "Intellectual Property Law In Israel, and US and European Objections: Market Exclusivity," Nature Biotechnology, 22(12):1591-1592, 2005

  • Co-author, "Interference Basics," Journal of Commercial Biotechnology, 11:54-62, 2004

  • Co-author, "Inventive Step and Genomics," Nature Reviews Drug Discovery, 3:729, 2004

  • Co-author, “Integra v. Merck: A Mixed Bag for Research Tool Patents, Nature Biotechnology, 21:1099-1101, 2003

  • Co-author, "Dominating Global Intellectual Property: Overview of Patentability in the USA, Europe and Japan," Journal of Commercial Biotechnology, 9(4):305-331, 2003

  • Co-author, "Integra: The Research Tool Patent Revival," Journal of Commercial Biotechnology, 10(2):162-166, 2003

  • Co-author, "Bioinformatics - A Patenting View," Trends in Biotechnology, 19 (9):334-9, 2001

  • Co-author, "Licensing Intellectual Property," Journal of Commercial Biotechnology, 7(3):208-17, 2001

  • Co-author, "Reach-Through Licensing: A U.S. Perspective," Journal of Commercial Biotechnology, 6(4):349-57, 2000

  • Author, "Analyzing the New Revised Utility Guidelines," Nature Biotechnology, 18:349-50, 2000

  • Author, "Analyzing the New Written Description Guidelines," Nature Biotechnology, 18:461-62, 2000

  • Author, "The Impact of GATT on the USPTO," St. John's Journal of Legal Commentary, 11:455, 1996

  • Author, "The Maintenance Fee System and Policy of the Patent and Trademark Office: Arbitrary, Irresponsible and In Need of Reform," IDEA, 30:95, 1989

  • Author, "Mask Works: Semiconductor Chip Designs - A New Form of Intellectual Property," BALANCE (SJU) 5:1, 1985

Selected Speaking Engagements

  • Panelist, "Antibody Patent Review: Global Perspectives on Enhancing Biologic Assets Protections," ACI 17th Advanced Summit on Life Sciences Patents, New York City, May 17, 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, BIO “Legal Certainty at an Affordable Price – the European Opposition Procedure,” Boston, Massachusetts, June 2018

  • Invited Speaker,  Chartered Institute of Patent Attorneys (UK), US Updates, “East of England Meeting,” 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, June 2015, New York

  • 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

  • Invited Speaker, "Personalized Medicine and Patent Life Cycle Considerations in Light of Prometheus and Other Recent Challenges to Subject Matter Patentability, Written Description and More," ACI 13th Maximizing Pharmaceutical Patent Lifecycles Conference, New York, 2013

  • Invited Speaker, Seminar on The America Invents Act by invitation for The Chartered Institute of Patent Attorneys (UK), 2013

  • Invited Speaker, Moderator, "The Morning After! AIA Is Fully Enacted and Other Patent Developments: What to Do in U.S. & European Patent Prosecution," 2013 Biotechnology Industry Organization (BIO) International Convention

  • Invited Speaker, PLI Fundamentals of Patent Prosecution 2013: A Boot Camp for Claim Drafting & Amendment Writing, Practising Law Institute, New York, June 2013

  • Invited Speaker, "The Myriad of Possibilities: Implications of the Supreme Court's Myriad Decision," Vedder Price Webinar, 2013

  • Invited Speaker, "Managing Unique Challenges and Investigating Emerging Trends in Foreign Patent Litigation," ACI Foreign Patent Litigation, 2013

  • Invited Speaker, Seminars for the European Patent Office on TALES & CRISPR, 2013

  • Invited Speaker, Seminar for the USPTO on TALES, 2013

  • Invited Speaker, Seminar for USPTO on Plant Patenting, 2012

  • Invited Speaker, "Parallel Proceedings in Paragraph IV Disputes: Strategies for Balancing and Streamlining Proceedings Before the Federal Courts, PTO and ITC," ACI 6th Annual Paragraph IV Disputes, New York, April 2012

  • Invited Speaker, Chair, "Contrasting the US and the European Patent System: Are the Opposition Procedures Proposed in the America Invents Act Competitive," Focus Day C5's The US Patent Reform for Life Science Companies, Munich, March 2012

  • Invited Speaker, "A Legal Briefing: Patenting in Formulation for Agrochemical Product," Informa Life Sciences 2nd Annual Conference on Agrochemical Formulation, Berlin, February 2012

  • Invited Speaker, "Patents in Strategy of Development of Pharmaceutical Company," Annual Congress of Industrial Group of Polish Pharmaceutical Society, Warsaw, October 2011

  • Invited Speaker, "Fundamentals Of Patent Prosecution 2011: A Boot Camp for Claim Drafting & Amendment Writing," Practising Law Institute, New York, June 2011

  • Invited Speaker, "The Impact of U.S. Developments on Pharma Lifecycle Extension," C5's 10th Annual International Forum on Patent Pharma Lifecycles, London, June 2011

  • Invited Speaker, "Drafting Successful Patent Applications for Biotechnology-Related Inventions," C5's 19th Forum on Biotech Patenting, London, October 2010

  • Invited Speaker, "Fundamentals Of Patent Prosecution 2010: A Boot Camp for Claim Drafting & Amendment Writing," Practising Law Institute, New York, June 2010

  • Invited Speaker, "The Role of Patents in Attracting Industry Interest in This Economy: What's in Your Patent Portfolio?," BIO, Effective Academia and Industry Interactions, Chicago, May 2010

  • Invited Speaker, "Review Of Recent Patent Inequitable Conduct Decisions And Their Significance," C5, Amsterdam, February 2009

  • Invited Speaker, "US Legislative and Regulatory Developments Impacting Pharma Patents," C5, London, June 2008

  • Invited Speaker, "The Latest News From The JPO, EPO, SIPO and USPTO," BIO, San Diego, June 2008

  • Invited Speaker, "Patentability Of Antibodies In The US," Cambridge Healthtech Institute PEG Conference, Cambridge, UK, May 2008

  • Invited Speaker, "Perfecting Claim Drafting and Prosecution in Life Sciences Patent Applications," ACI, New York, February 2008

  • Invited Speaker, "Key Agencies Overview: Understanding The Jurisdiction and Interplay of the FDA and USPTO in the Patenting of Drugs and Biologics," ACI, San Francisco, September 2007

  • Invited Speaker, "The "Win-Win" Collaborative Agreement: Ethical and Practical Negotiating and Drafting Strategies," ACI, San Francisco, July 2007

  • Invited Speaker, "Key Agencies Overview: Understanding The Jurisdiction and Interplay of the FDA and USPTO in the Patenting of Drugs and Biologics," ACI, New York, June 2007

  • Invited Speaker, "Developments From The JPO, EPO, SIPO & USPTO," BIO, Boston, May 2007

  • Invited Speaker, "Fundamentals Of Patent Prosecution 2006: A Boot Camp For Claim Drafting & Amendment Writing," Practising Law Institute, New York, August 2006

  • Invited Speaker, "Biotech/Pharma Collaborative Agreements," ACI, San Francisco, July 2006

  • Invited Speaker, "What Can be Patented in Biotechnology in Europe and the US Today, Master Class," C5, London, April 2006

  • Invited Speaker, "What’s New? Perspectives to and from the JPO, EPO and USPTO," BIO, Chicago, April 2006

  • Invited Speaker, "Drafting Successful Biotech Patent Applications For Europe And The US - A Comparative Approach," C5, London, September 2006

  • Invited Speaker, "Drafting Successful Biotech Patent Applications For Europe And The US - A Comparative Approach," C5, Munich, April 2005

  • Invited Speaker, "USPTO Practice Development," IBC Lifesciences, Brussels, September 2005

  • Invited Speaker, "Drafting Techniques & Procedural Strategies For The New Generation Of Biotech Patents," C5, London, December 2005