Portrait of Partner Scott D. Locke, Esq.

Scott D. Locke

Partner
Chair, Intellectual Property Department

Education:

J.D., University of Pennsylvania School of Law, 1995

B.S. in Biology, Brown University, 1991,
magna cum laude
elected to Sigma Xi

Memberships:

U.S. District Court for the Southern District of New York

U.S. District Court for the Eastern District of New York

U.S. Court of Appeals for the Federal Circuit

U.S. Patent & Trademark Office

New York State

Connecticut

Scott D. Locke is a Partner at Dorf & Nelson 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’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

New York Metro Super Lawyers: 2015, 2016 and 2017

– 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 Edition (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, quote on PTO guidance (June 25, 2014)
– The Evolving Hurdle of Patentable Subject Matter, New York Law Journal, Special Section (January 6, 2014)
– Intellectual Property and the Life Sciences Industry, NY BioHud Valley, 2013 Annual Review, The State of the Life Sciences Industry in the Hudson Valley
– Life Sciences Law & Industry Report ISSN 1935-7257
– 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, Volume 22 – No. 2 (December 2012)
– 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)
– 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 Demonstrating 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)
– 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

– 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, 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
– Adjunct Professor at Seton Hall, Biotechnology and the Law: Counseling the Start-Up on Intellectual Property Issues (2002-2006)