Timing is Everything


Virtual Roundtable: Intellectual Property
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.

Mr. Locke is a partner at Dorf & Nelson LLP and a patent attorney, who 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 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.