Portrait of Partner Scott D. Locke, Esq.

Scott D. Locke

Partner
Chair, Intellectual Property Department
slocke@dorflaw.com
914.381.7600   x120
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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

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Scott D. Locke is the Chair of Dorf & Nelson’s Intellectual Property Department and oversees the Life Sciences practice area. Mr. Locke counsels clients on the procurement, enforcement and licensing of patents, trademarks, copyrights and trade secrets, and he provides solo inventors, start-up businesses and well-established companies in diverse industries with strategies and tools for maximizing the return on their investment in their ingenuity, creativity and goodwill.

Experience in Intellectual Property:

Mr. Locke has counseled clients in industries on the cutting edge of many scientific disciplines, including biotechnology, life sciences, bioinformatics, pharmaceuticals, 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, the consumer products industry, including both brick and mortar and e-commerce vendors, and the information technology industry. 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 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 provided 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. He has also counseled clients with respect to positioning and prosecuting patent portfolios, as well as litigating and licensing valuable intelligent property rights to these clients.

– New York Metro Super Lawyer: 2015-2017
– 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)