Thomas J. Kowalski

Partner

  • Thomas J. Kowalski
  • Phone: +1 212 692 1025

    Import to Address Book

  • Duane Morris LLP
    1540 Broadway
    New York, NY 10036-4086
    USA
  • Duane Morris LLP
    230 Park Avenue, Suite 1130
    New York, NY 10169-0079
    USA

Thomas J. (Tom) Kowalski is a seasoned registered U.S. patent attorney and a partner in the firm’s New York (Broadway) office. He is Chair of the Life Sciences, Pharmaceuticals, and Biotechnology Division of the firm's Intellectual Property Practice Group and is a member of the firm’s Life Sciences group. 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 Chair of the American Bar Association Intellectual Property Law Section Pro Bono Committee, a faculty member of the Practising Law Institute and a Chair of PLI’s Patent Boot Camp, a member of the editorial board of the ABA’s IP publication Landslide, and the lead author and editor of the treatise, “The Mechanics of Patent Claim Drafting.”

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

Representative Matters

  • Representation before the US District Court for the Eastern District of New York (Central Islip) of Eurofins DiscoverX LLC & Eurofins DiscoverX Products LLC in asserting patent infringement, trademark infringement and unfair competition against Creative Biolabs, Inc., Creative Dynamics, Inc., Creative Biomart, Inc. BOCSCI, Wenyi Zhang, Donghai Chen.

  • Represented Medstar Health, Inc. as patent prosecution and advice counsel, successfully prosecuted patent.

  • Delivered one of the first post-pandemic live oral arguments at the United States Patent and Trademark Office (USPTO) Patent Trial and Appeal Board (PTAB) on behalf of Rijk Zwaan, a vegetable breeding company, in connection with the patentability of a new hybrid celery. The PTAB reversed the USPTO examiner and held that client’s new hybrid celery is adequately described by the biological deposit of seed along with the description in the patent application and that the hybrid celery is nonobvious (patentable).

  • 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.

Admissions

  • New York
  • U.S. Patent and Trademark Office (USPTO)
  • 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

  • Liaison to the American Bar Association Pro Bono Committee from the ABA Section of Intellectual Property Law (ABA-IPL), 2024-2025
  • Member ABA-IPL Council
  • Member ABA IPL Division Leadership
  • Fellow of the American Bar Foundation, 2024

  • New York State Bar Association

  • American Bar Association
    -Chair, Intellectual Property Law Pro Bono Committee 

  • New York Intellectual Property Law Association (NYIPLA)
    - Moderator “IP Transactions Bootcamp”
    - Amicus Brief Committee, 2012-2018

  • Practising Law Institute Faculty (Including Co-Chair: PLI Fundamentals of Patent Prosecution 2018, 2019: A Boot Camp for Claim Drafting & Amendment Writing Practising Law institute, New York, New York)

Honors and Awards

  • Named as a Thomson Reuters Stand-out Lawyer, 2022-2024
  • LMG Life Sciences Awards Patent Strategy Attorney of the Year - New York, 2023 
  • Listed in World Intellectual Property Review (WIPR) Leaders Directory, 2022-2024

  • New York Law Journal 2019 (inaugural list) New York Trailblazer

  • Listed in LMG Life Sciences Intellectual Property Stars, 2018-2023

  • 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®

Board Memberships

  • Editorial Board Member of Landslide, the American Bar Association’s Intellectual Property Law Publication

Selected Publications

Selected Speaking Engagements

  • Speaker, "Amgen v. Sanofi One Year Later: Mastering the Art of Claim Balance and Disclosure in Life Sciences Patent Prosecution," American Conference Institute Life Sciences Patents Conference, May 29, 2024
  • Speaker, "The U.S. PTO’s War Against the Unauthorized Practice of Patent and Trademark Law by ForeignAssociates: Ethical Considerations and Best Practices for Protecting Yourself and Your Clients from Sanctions and Discipline," American Bar Association Asia/Pacific Conference, October 11, 2023
  • Co-chair, "Patent Fundamentals Bootcamp 2023: An Introduction to Patent Drafting, Prosecution, and Litigation," Practising Law Institute, September 12, 2023
  • Speaker, "CRISPR, CAR T and mRNA: Scrutinizing Recent Life Sciences IP Controversies to Develop a New Way Forward," American Conference Institute Life Sciences Patents Conference, May 19, 2023 
  • Speaker, "Issues Facing Startups - Innovation Conversation with Thomas Kowalski," Northern Illinois University Webinar, March 22, 2023
  • Speaker, "CRISPR (and other Life Sciences) US Patent Update," The Chartered Institue of Patent Attorneys Life Science Conference, November 29, 2022
  • Moderator, "IP Pro Bono: New USPTO Programs and Responsibilities for Practitioners," American Bar Association 2022 IP Fall Institute, October 12, 2022 
  • Speaker, "Patent Agreements," New York Intellectual Property Law IP Transactions Bootcamp, October 6, 2022
  • Speaker, "Opening Remarks," PLI Patent Fundamentals Bootcamp 2022: An Introduction to Patent Drafting, Prosecution, and Litigation, September 14, 2022
  • Clinician, "Clinic II: Patent Amendment Writing, PLI Patent Fundamentals Bootcamp 2022: An Introduction to Patent Drafting, Prosecution, and Litigation," September 14, 2022 
  • Speaker, "Protecting CAR-T and other Immunotherapies: In-House Challenges," LSPN North America Spring Conference, May 12, 2022
  • Speaker, "Standing Out in a Crowded CRISPR World: How to Strengthen Your Patents Utilizing CRISPR Technology," 20th Advanced Summit on Life Sciences Patents Conference, June 3, 2022
  • 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