Thursday 2 July

US Patent-Eligible Subject Matter – Latest Thinking

When and where

Date and time

Start: Thursday 2 July 2020, 12:30 PM

End: Thursday 2 July 2020, 01:30 PM

Event Overview

US Patent Attorneys, Thomas J Kowalski and Dr Deborah L Lu of Duane Morris LLP, will provide an overview of Patent Eligibility under 35 USC 101, and examine the latest developments in the US — case law and practical experience before the USPTO — in the ongoing saga of Patent-Eligible Subject Matter vs Ineligible Natural Phenomenon.  The panel will examine the approaches being taken for determining patent-eligible subject matter, including whether and how a type of problem-solution approach is playing into whether an invention is patent-eligible in the US under 35 USC 101.


Fellows, Students


Thomas Kowalski, Duane Morris LLP

Thomas Kowalski, Duane Morris LLP

Thomas J. Kowalski is a partner in the New York Broadway office of the US-based, global law firm, Duane Morris LLP.

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.  Tom is a Registered US Patent Attorney with over 35 years’ experience.

Tom’s practice includes domestic and worldwide biotech, chemical and medical apparatus litigation or contentious matters, patent prosecution, and counseling; and procuring and enforcing trademarks, domestically and worldwide. He also negotiates and drafts agreements, including as to IP licensing, collaborations, and in avoidance of litigation. His counseling activities include strategies for clients to enjoy Freedom to Operate, and effecting those strategies.

Tom earned an American Chemistry Society (ACS) certified B.S. from New York University and a J.D., with honors, from St. John’s University School of Law.

In fulfilling the requirements for ACS certification of his NYU degree, Tom extensively studied graduate biochemistry, graduate inorganic chemistry, genetics, and computer science and performed laboratory research: a joint project amongst NYU – in the laboratory of Prof. Yorke E. Rhodes, Ph.D. – and 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 under that Grant at Hunter College, City University of New York, in the laboratory of Prof. Joseph J. Dannenberg, Ph.D.  Tom’s work under the NSF-URP Grant was published in the Journal of Organic Chemistry.

Tom’s professional activities have included being a member of editorial boards, and acting as an editorial advisor.  He is a member of a number of IP professional organizations, and is currently Chair of the American Bar Association’s Intellectual Property Law Pro Bono Committee.

Tom has represented clients in numerous matters before various US Federal Courts, and the USPTO, including before the USPTO PTAB. Tom also has extensive international experience and has appeared before courts and in proceedings throughout the world, including in London, England; The Hague, Netherlands; Dusseldorf, Mannheim and Munich, Germany; Vienna, Austria; Tokyo, Japan; Melbourne and Canberra, Australia; New Zealand, and Rio de Janeiro, Brazil.

Deborah Lu, Duane Morris LLP

Deborah Lu, Duane Morris LLP

Deborah L. Lu, Ph.D. practices in the area of intellectual property law with a focus on preparation and prosecution of patent applications. Dr. Lu obtains and evaluates intellectual property protection, manages complex patent portfolios and counsels clients regarding validity, freedom-to-operate and patentability in biotechnology and pharmaceuticals. She is involved in both ex parte and inter partes re-examinations and interferences, and also negotiates transactions involving intellectual property issues such as licenses and agreements.

Dr. Lu is a 2004 graduate of Fordham University School of Law. She earned Ph.D. and M.S. degrees in Biological Chemistry from the University of Michigan and a B.S. in Biological Sciences with a concentration in Biochemistry from Cornell University.

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