Lawyer Overview
Scott D. Locke is a Partner at Dorf Nelson & Zauderer LLP and Chair of the Firm’s Intellectual Property Department. With over two decades of experience, Mr. Locke counsels and advises clients on both soft intellectual property and as a member of the patent bar, complex technologies. He works with solo inventors, start-up businesses and well-established companies in diverse industries for whom he provides strategies and tools for maximizing the return on investment in their ingenuity, creativity and goodwill.
Experience in Intellectual Property:
Mr. Locke handles all aspects in the life cycle of a client’s intellectual property, including: prosecution and registration, due diligence, clearance, licensing, and enforcement of patents, copyrights, trademarks and trade secrets. Dorf Nelson & Zauderer’s clients operate in diverse industries, including fashion, cosmetics, luxury goods, biotechnology, industrial and organic chemical, e-commerce, information technology, pharmaceuticals, eco-friendly technologies, medical devices, artificial intelligence, CBD, and charitable institutions. Mr. Locke has handled a broad range of services for the Firm’s clients including:
- 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 assets for potential acquisition
- Drafting and negotiating intellectual property licenses
- Counseling clients on data privacy and database protection
- Developing trade secrets protection policies
Experience in Life Sciences:
Mr. Locke has decades of experience advising, counseling and providing legal services to innovative clients in the Life Sciences industry including:
- Development of patent portfolio strategies for biotechnology companies, including those directed to siRNA and SNPs
- Conducting due diligence on patent portfolios that focus on molecular delivery systems
- Litigation of patents directed to pharmaceuticals, genotyping, nucleotide synthesis and medical devices
- Counseling medical device companies on protection and enforcement
- Prosecution of hundreds of patents directed to bioinformatics, RNAi, nucleotide sequences, oligonucleotide synthesis, pharmaceuticals and medical devices
Awards & Accomplishments
New York Metro Super Lawyers® 2015, 2016, 2017, 2023, 2024 and 2025
Publications, Presentations & Lectures
Publications:
- “Leveraging Copyright Law to Protect Against the Unauthorized Use of a Brand’s Logo,” Westchester Bar Journal (March 2023)
- “The Low Bar of the Non-Obviousness Standard for Design Patents,” New York Law Journal (August 19, 2022)
- “Patents: Provisional Rights Under 35 USC §154(d),” New York Law Journal (March 30, 2016)
- “Freedom to Operate Opinions: Worth the Cost?,” ACC Docket (October 2015)
- “Standard Essential Patents and Damages,” New York Law Journal (January 20, 2015)
- “Stopped at the Threshold: The Practical Impact of the Supreme Court’s Mayo and Myriad Decisions on Biotechnology Patent Practices,” Bloomberg BNA (June 25, 2014)
- “The Evolving Hurdle of Patentable Subject Matter,” New York Law Journal (January 6, 2014)
- “Intellectual Property and the Life Sciences Industry,” NY BioHud Valley Annual Review (2013)
- “Federal Circuit Declines to Endorse Patent Marking Estoppel,” New York Law Journal (May 8, 2013)
- “Regaining What Was Lost: Revival of Abandoned Patent Applications and Lapsed Patents,” The Federal Circuit Bar Journal, Vol. 22, No. 2 (December 2012)
- “Invoking the Routine Optimization Doctrine in Rejecting Patent Claims,” New York Law Journal, Vol. 248, No. 49 (September 10, 2012)
- “Determining Non-Obviousness In Patenting of Chemical Compounds,” New York Law Journal, Vol. 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,” Albany Law Journal of Science & Technology (2012)
- “Patent Marking Estoppel and the Patent Licensee,” 9 Northwestern Journal of Technology & Intellectual Property 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)
- “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 (September/October 2006)
- “Creating and Demonstrating Value in the Intellectual Property of Biotechnology Companies,” Financier Worldwide Biotechnology Review, pp. 118-110 (2006)
- “Fifth Avenue and the Patent Lawyer: Strategies for Using Design Patents to Increase the Value of Fashion and Luxury Goods Companies,” 5 John Marshall Review of Intellectual Property Law 40 (2005)
- “Losing Patent Rights for Failing to Comply with Bayh-Dole; The Implications of the Campbell Plastics Case on Federally Funded University Research,” Journal of the Association of University Technology Managers (Summer 2005)
- “Patent Litigation Over Federally Funded Inventions and the Consequences of Failing to Comply with Bayh-Dole,” 8 Virginia Journal of Law & Technology 3 (2003)
- “Preparing for Bioinformatics Litigation: How Will the Courts Confront the Next Generation of Biotechnology Patents?,” 1 Buffalo Intellectual Property Law Journal 76 (2000)
- “When the Human Genome and State Street Collide,” Nature Biotechnology, 18: 1009-1010 (2000)
Presentations & Lectures:
- “Navigating Intellectual Property Issues in the Life Sciences Industry: Leveraging Ingenuity to Generate Profit,” Columbia University (March 13, 2013)
- “The Business Method Patent and the Patent Reform Act of 2007: Where Do We Go From Here?,” Fordham University symposium (November 16, 2007)
- “Navigation of Intellectual Property Issues for the Small-Medium Size Businesses,” La Guardia College (September 25, 2007)
- “Patenting of the Human Genome,” International Conference Bienal da Utopia: Human Genome Towards the New Millennium, Cascais, Portugal (July 12-14, 2001)
Teaching Experience
Adjunct Professor at Seton Hall, “Biotechnology and the Law: Counseling the Start-Up on Intellectual Property Issues” (2002-2006)