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Scott D. Locke, Esq.

Partner & Chair of the Intellectual Property Department

Scott D. Locke is the Chair of Dorf & Nelson's Intellectual Property Department and oversees the Life Sciences practice area.  Drawing on his well over a decade of experience counseling clients on the procurement, enforcement and licensing of patents, trademarks, copyrights and trade secrets, Mr. Locke provides solo inventors, start-up businesses and well-established companies in diverse industries with strategies and tools for maximizing the return on their ingenuity, creativity and good will.

 

 

Experience in Intellectual Property Law

Mr. Locke has counseled clients in industries on the cutting edge of many scientific disciplines, including biotechnology, life sciences, bioinformatics, fuel cells, automobile catalysts and eco-friendly technologies.  He has also counseled clients in the coatings and pigments industry, the luxury goods industry, the cosmetics industry, the medical device industry and the information technology industry, including internet-based technologies.  Among the services for these clients that Mr. Locke has provided are:

  • Drafting, filing and prosecuting hundreds of patent applications

  • Registering of trademark and copyright rights

  • Litigating patent, trademark and copyright cases

  • Performing due diligence regarding intellectual property matters for potential acquisition

  • Drafting and negotiating intellectual property licenses

  • Counseling clients on database protection

  • Developing trade secrets protection policies

 

Experience in Life Sciences

Mr. Locke provides legal services to innovative clients in the life sciences industry with respect to RNA synthesis; DNA synthesis; RNA interference, including siRNA and miRNA; SNP technologies; gene therapy; cosmetic formulations; detection of diseases and disorders; pharmaceuticals; and delivery systems.  Mr. Locke provides counsel regarding positioning and prosecuting patent portfolios, as well as litigating and licensing valuable intelligent property rights to these clients.

Publications

Regaining What Was Lost: Revival of Abandoned Patent Applications and Lapsed Patents, The Federal Circuit Bar Journal, Volume 22 - No. 2 (December 2012) (copies available upon request)

Invoking the Routine Optimization Doctrine in Rejecting Patent Claims , New York Law Journal, Volume 248 - No. 49 (September 10, 2012)

Determining Non-Obviousness In Patenting of Chemical Compounds, New York Law Journal, Volume 247-No.106 (June 4, 2012)

Nucleotide Sequences and Recombinant Technologies : Trends in the Application of the Written Description Requirement to Inventions from the Biotechnology Industry, Alb. L. J. Sci. & Tech. (2012)

Patent Marking Estoppel and the Patent Licensee, 9 Nw. J. Tech. & Intell. Prop. 337 (2011)

Mapping Opportunities for Patent Positions, Pharmaetch.com (June 2, 2009)

Protecting Pharmaceutical Inventions in a KSR World,  Franklin Pierce Intellectual Property Law Review, Vol. 50 (1) 1-28 (2009)

Business Method Patents: The Challenge of Coping with an Ever Changing Standard of Patentability, The Fordham Intellectual Property, Media and Entertainment Law Journal, 5: 1079-1094 (2008)

Intellectual Property for the Botanist and Plant Breeder: An Overview of Protection Afforded by Plant Patents and Plant Variety Protection Certificates, 6 Chicago-Kent Journal of Intellectual Property 198 (2007)

Compliance Can Be a Catalyst for a Smart IP Strategy, Executive Counsel, pp. 14-17 (Sept/Oct. 2006)

Creating and Demonsrating Value in the Intellectual Property of Biotechnology Companies, Financier Worldwide Biotechnology Review, pp. 118-10 (2006)

Fifth Avenue and the Patent Lawyer: Strategies for Using Design Patents to Increase the Value of Fashion and Luxury Goods Companies, 5 John Marsh. Rev. Int. Prop. L.  40  (2005)

Losing Patent Rights for Failing to Comply with Bayh-Dole; The Implications of the Campbell Plastics Case on Federally Funded University Research, J. Assoc. Univ. Tech. Manag. (Summer 2005)

Patent Litigation Over Federally Funded Inventions and the Consequences of Failing to Comply with Bayh-Dole, 8 Va J. L. & Tech. 3 (2003)

Preparing for Bioinformatics Litigation: How Will the Courts Confront the Next Generation of Biotechnology Patents? 1 Buff. Intell. Prop. L. J. 76 (2000)

When the Human Genome and State Street Collide, Nature Biotechnology, 18: 1009-1010 (2000)


Presentations
The Business Method Patent and the Patent Reform Act of 2007: Where Do We Go From Here? Fordham University, November 16, 2007 (symposium)

Navigation of Intellectual Property Issues for the Small-Medium Size Businesses, La Guardia College, September 25, 2007

Patenting of the Human Genome at the Internacional Conference, Bienal da Utopia: Human Genome Towards the New Millennium, Cascais, Portugal, July 12 - 14, 2001


Teaching experience
Mr. Locke was an adjunct professor of law at Seton Hall University where he designed and taught: Biotechnology and the Law: Counseling the Start-Up Company on Intellectual Property Issues (2003 - 2007)

Mr. Locke also taught legal writing at the University of Pennsylvania School of Law (1994-1995)


Education
Mr. Locke received his Juris Doctorate degree from the University of Pennsylvania School of Law in 1995. He received his Bachelors degree in Biology from Brown University in 1991, where he graduated magna cum laude and was elected to Sigma Xi.


Bar Memberships

Mr. Locke is admitted to the bars of the United States District Courts for the Southern and Eastern Districts of New York and the United States Court of Appeals for the Federal Circuit. He is also admitted to practice in the courts of the states of New York (1996) and Connecticut (1995) and is registered to practice before the United States Patent and Trademark Office in patent matters.