Overview
Tom Filarski represents prominent pharmaceutical, medical device, and electronics companies in patent enforcement and defense actions. According to clients, Tom "has a gift for explaining technology and technological terms in a way that makes them understandable to a judge, a jury, or any decision maker." Tom is "on the cutting-edge at all times" in Hatch-Waxman pharmaceutical disputes and "knows how to extract value out of patent rights, and understands the changing nature of the marketplace," according to IAM Patent 1000.
Recently, Tom successfully led a major drug manufacturer in multiple patent disputes, ultimately allowing the company to sell its several FDA-approved products used to enhance eyelash growth and treat upper respiratory infections and other conditions.
Tom has been involved in landmark patent cases on claim construction and patent venue. He led the teams that resolved the debate within the Federal Circuit over the interpretation of product-by-process claims and, more recently, the Federal Circuit’s decision on "regular and established place of business."
Tom is the past president of the Licensing Executives Society (USA and Canada), which promotes the development and transfer of technology into commerce. He also served on the board of the Richard Linn American Inn of Court. Tom speaks to professional and industry groups in the United States and abroad on patent litigation and intellectual property topics.
Tom authored the chapter on "Patent Defenses" in BNA Books' Patent Litigation Strategies Handbook and the chapter on "Basics of Patent Law: Strategies for Entrepreneurs and Start-Up Enterprises" in the recent publication Medical Innovation, Concept to Commercialization.
- Illinois
- Supreme Court of the United States
- US District Court, Northern District of Illinois, Trial Bar
- US Court of Appeals, Federal Circuit
- US Patent & Trademark Office
- J.D., DePaul University College of Law, 1986
- M.S., Michigan Technological University, 1980, Chemical Engineering
- B.A., Loyola University Chicago, 1978, Chemistry
Areas of Work
Representative Matters
- Represented Sandoz Inc. in patent litigation involving a drug used to grow eyelashes.
- Represented Sandoz Inc. in patent litigation and obtained temporary restraining order and preliminary injunction over patents relating to an antibiotic used to treat upper respiratory infections.
Speaking Engagements
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"The Policy and Practicalities of Jurisdiction: Debating the Impact of TC Heartland on Paragraph IV Litigation," ACI's Paragraph IV Disputes Master Symposium, Chicago, IL, October 2, 2017
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Moderator, ACI's Paragraph IV Disputes Master Symposium, Chicago, IL, September 19, 2016
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Moderator, "Judges’ Spotlight: Lessons from the Hatch-Waxman Experience for Biosimilars Litigation," ACI's 6th Annual Summit on Biosimilars, New York, NY, June 1, 2015
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"The Potential Impact of Octane or Legislatively Mandated Fee Shifting on Case Management," FCBA 2015 Advanced Complex Litigation Series, May 15, 2015
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"Incorporating Inter Partes Review and New USPTO Procedures Into Branded and Biosimilar Litigation Strategies," ACI's US Biosimilars, Munich, Germany, April 20, 2015
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"Intellectual Property Strategy," 2015 Clean Energy Challenge, March 12, 2015
News & Publications
Press Releases
Steptoe Receives 12 Individual, Four Practice Mentions in IAM Patent 1000
June 30, 2022
Press Releases
Steptoe Receives 125 Individual Mentions in Best Lawyers in America 2021
August 20, 2020
Press Releases
Steptoe Receives Four Practice, 13 Individual Mentions in IAM Patent 1000
June 22, 2020
Press Releases
Steptoe Receives 86 Individual Mentions in Best Lawyers 2020
August 15, 2019
Press Releases
Steptoe Receives Four Practice, 12 Individual Mentions in IAM Patent 1000
July 19, 2019
Press Releases
Steptoe Receives 90 Individual Mentions in Best Lawyers 2019
August 15, 2018
Noteworthy
- LMG Life Sciences Awards shortlist, "General Patent Litigator of the Year – Midwest" (2023)
- IAM Patent 1000, Litigation: Illinois (2012-2023)
- Best Lawyers in America, Patent Law (2010-2020, 2022)
- Super Lawyers, Illinois, Intellectual Property Litigation (2005-2021)
- Leading Lawyers, Intellectual Property Law, Copyright & Trademark Law, Patent Law (2004, 2005, 2007, 2009, 2010, 2014, 2020)
- IAM Patent 1000, Transactions: Illinois (2018-2020)
- LMG Life Sciences, "Life Science Star" (2012, 2014-2017)
- Managing Intellectual Property, "Stars" in IL (2013-2017)
- IAM Patent 1000, Highly Recommended, Transactions: Illinois (2012-2015)
- IAM 250, Highly Recommended, The World's Leading Patent & Technology Licensing Lawyers (2011-2012)
- IAM 250, The World's Leading Patent & Technology Licensing Lawyers, Life Sciences (2011-2012)
- IAM 250, The World's Leading Patent Litigators (2011)
- IAM 250, The World's Leading Life Sciences Patent Litigators (2010)