Virtual Roundtable: Intellectual Property

Recent Session:
Issues for Bioinformatics and Digital Innovation
January 24
, 2019
Recording PDF

Scott D. Locke, Esq., Partner & Chair
Intellectual Property Department, Dorf & Nelson
Laura Smalley, Esq., Member, Harris Beach

Moderator: Christopher C. Palermo, Esq.
Senior Counsel, Harris Beach

Patent guidelines and recommendations vary by discipline, from molecules to devices to computer codes. In our current age, digital innovation is a necessity for all businesses. Researchers and entrepreneurs are responsible for understanding how this innovation and ownership is protected.

Among the most rapidly growing sub-disciplines in the biotechnology industry are the management and manipulation of data, the creation of code for bioinformatics and personalization of medicine, and the creation of apps. Protection of and capitalization on these assets can be challenging, particularly because of recent trends in U.S. patent law that have narrowed the types of inventions that are eligible for patent protection.

This roundtable will explore the current digital patent landscape, the business implications of this landscape, and strategies outside of patent protection for businesses whose innovations are in these areas.

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About our Speakers:

Scott Locke
counsels clients on the procurement, enforcement, and licensing of patents, trademarks, copyrights, and trade secrets. He provides solo inventors, start-up businesses, and well-established companies across diverse industries with strategies and tools for maximizing the return on their investment in their ingenuity, creativity, and goodwill. His clients include innovators in the fields of pharmaceuticals, delivery systems, diagnostics, siRNA technologies, Cas9 related technologies, gene therapies, and medical devices.

Laura Smalley represents clients in a wide range of complex commercial matters, including patent, trademark, and business litigation. She is a member of Harris Beach’s Business & Commercial Litigation, Intellectual Property, and Appellate Litigation & Advocacy Practice Groups. Laura is also a member of Harris Beach's Electronic Information Counseling and Management Team and the Nanotechnology Industry Team.

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Christopher Palermo is a senior counsel at Harris Beach with experience representing pharmaceutical companies in government investigations, class action litigation, antitrust matters, and claims brought by the U.S. Department of Justice and state Attorneys General involving marketing and pricing practices. He has experience representing companies in disputes involving intellectual property, trade secrets and unfair competition claims. He also has advised clients in the life sciences industry on a variety of compliance issues. He is a member of the Executive Committee of the Food, Drug and Cosmetic Law Section of the New York State Bar Association.


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Past Sessions

Virtual Roundtable: Intellectual Property
Timing is Everything

July 10, 2018 • Recording PDF

Scott D. Locke, Esq., Partner & Chair
     Intellectual Property Department, Dorf & Nelson
Moderator: Christopher C. Palermo, Esq.
     Senior Counsel, Harris Beach

When it comes to developing a patent protection strategy there are many issues to consider. One of the most critical of these issues is determining when, during the innovation process, the right time to file for patent protection is. Expert advice in identifying that time is crucial to realizing your full market potential.

This discussion will explore for entrepreneurs and inventors how different answers to the following questions should inform their decision making process:

- Is your technology sufficiently developed to enable commercially valuable claims to be made?
- To what extent will you need to have developed data in order to claim aspects of the technology that might set you above the competition?
- Are you letting the perfect be the enemy of the good and delaying your filing too long thereby losing the race to the USPTO?

The significance of how one answers these questions and others will be discussed by legal experts with the goal of educating those who might find themselves sitting on intellectual property, unsure of their next move.


Roundtable: Intellectual Property
April 24, 2018
Dorf & Nelson
555 Theodore Fremd Avenue, Rye, NY 10580

Co-Chairs: 
Scott D. Locke, Esq., Partner & Chair,
       Intellectual Property Department, Dorf & Nelson
Christopher C. Palermo, Esq., Partner, Bleakley Platt & Schmidt


At some point you may become an inventor if you aren't one already.
As a researcher, engineer, or data scientist entering the entrepreneurial world, it pays to understand the steps needed to protect your discovery or innovation. If gone about the wrong way, researchers will be unable to realize the value of the inventions into which they poured their energy, and unable to attract the funding that they need to bring their discovery to market. This session will address the many issues related to intellectual property protection and management, with guidance on turning your invention into a recognized asset.

Mr. Locke counsels clients on the procurement, enforcement and licensing of patents, trademarks, copyrights, and trade secrets. He provides solo inventors, start-up businesses, and well-established companies across diverse industries with strategies and tools for maximizing the return on their investment in their ingenuity, creativity, and goodwill. His clients include innovators in the fields of pharmaceuticals, delivery systems, diagnostics, siRNA technologies, Cas9 related technologies, gene therapies, and medical devices.

Mr. Palermo is a litigation partner with experience representing pharmaceutical companies in government investigations, class action litigation, antitrust matters, and claims brought by the U.S. Department of Justice and state Attorneys General involving marketing and pricing practices. He has experience representing companies in disputes involving intellectual property, trade secrets and unfair competition claims. He also has advised clients in the life sciences industry on a variety of compliance issues. He is a member of the Executive Committee of the Food, Drug and Cosmetic Law Section of the New York State Bar Association.

If you have any questions please contact us: info@westchesterbiotechproject.org