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Patent & Trademark Procurement and IP Litigation for over 35 Years


Litigation at Scully Scott

Since its founding more than 35 years ago, Scully Scott Murphy & Presser has become well known for its successful patent prosecution practice. It has an unmatched reputation for delivering value to its clients in procuring strong patents and for delivering the highest level of client service. Less well known is that Scully Scott has been litigating patent, trademark, trade secret and copyright disputes throughout its history in a broad range of technical and business environments. The Scully Scott team maintains the same commitment to value and service in its litigation practice as it does in its prosecution practice. It is proud of its reputation for being focused on and committed to the aggressive protection and enforcement of intellectual property.

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Ropes & Gray Can't Shake Patent Malpractice Suit
A Massachusetts federal judge refused on Jan 13th to dismiss a suit accusing Ropes & Gray LLP and a former partner of botching patent applications for Cold Spring Harbor Laboratory (CSHL) and costing the lab millions of dollars in potential licensing fees. CSHL is represented by Chad E. Ziegler and Peter I. Bernstein of Scully Scott.

U.S. District Judge Richard G. Stearns said that Cold Spring Harbor Laboratory had alleged sufficient facts to sustain its claims of legal malpractice, breach of fiduciary duty, fraud and fraudulent misrepresentation and negligence against Ropes & Gray and its former partner, denying the defendants' dismissal motions.

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SSMP Sponsors BayHelix Reception
For the second consecutive year, SSMP was proud to be the sole sponsor of CCTEC's (Cornell Center for Technology, Enterprise and Commercialization) BayHelix Reception. The invitation-only networking reception was held on Thursday, September 15th from 6:30- 9PM at the Cornell Club in New York, NY. Partners, Xiaochun Zhu and Peter Bernstein attended the event.

BayHelix is a non-profit, invitation-only organization for business leaders of Chinese origin in life sciences and healthcare with over 200 members throughout the United States, Canada, and Greater China. BayHelix hopes to shape these industries as well as promote and build business opportunities, encourage community leaders and share information and experiences. SSMP applauds BayHelix for its commitment to improving life sciences and healthcare worldwide.

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Scully Scott Sponsors 2011 BIO China Convention
SSMP was a proud sponsor of the inaugural BIO International Convention in China. Partners, Frank S. DiGiglio and Xiaochun Zhu represented the firm at the convention which took place at the Pudong Shangri-La Hotel in Shanghai, October 12th and 13th. Frank moderated the panel, "Encouraging Innovation through Robust Patent Enforcement." Panelists included Brian P. Barrett, R.Ph., J.D., Senior Director and Assistant General Patent Counsel, Eli Lilly and Company and Tina Tai, Patent Attorney, Attorney at Law and Assistant General Manager, China Patent Agent (H.K.) Ltd. Xiaochun focused on networking with both current and prospective clients.

BIO China brings together executives from biotechnology, pharmaceutical and investment firms from North America, Europe and Asia to meet and explore business opportunities with China's emerging biotech sector. BIO represents more than 1,200 biotechnology companies, academic institutions, state biotechnology centers in the U.S. and more than 30 nations worldwide.

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SSMP Sponsors 2nd Honoring Inventors Reception
For the second consecutive year, Scully Scott is pleased to be a Platinum sponsor of the Second Annual Honoring Inventors Reception. The reception will be held on Thursday, October 27th from 6-9PM at Flowerfield in St. James, NY.

The reception will bring together Brookhaven National Laboratory, Stony Brook University and Cold Spring Harbor Laboratory to honor all of the inventors that have issued patents in 2010 at these institutions.

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SSMP Sponsors Life Sciences Summit 2011
For the third consecutive year, Scully Scout is proudly sponsoring the
Life Sciences Summit 2011. The Summit will take place on Wednesday, November 16th and Thursday, November 17th at the Sentry Centers Midtown East in New York, NY. This is the first year that the event will take place in New York City. The new location is expected to attract even more attendees from across the U.S. and Europe.

Organized by the Center for Biotechnology, a New York State Center for Advanced Technology in Medical Biotechnology and Demy-Colton Life Science Advisers, the two-day event focuses on building relationships between biopharmaceutical companies and companies emerging from academia to accelerate the development of biomedical solutions in the areas of infectious disease, neuroscience, oncology and regenerative medicine.

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America Invents Act (AIA) Overview

Effective Dates for Third-Party Practice Under the AIA



Sept 15 -- BayHelix Reception

Oct 12 -- BIO Convention in China

Oct 27 -- Honoring Inventors Reception

Nov 16 -- Life Sciences Summit 2011



Conditional Patent Marking
by Paul J. Esatto, Jr.

Personal Jurisdiction Questions related to Trademark Infringement on the Internet
by Keith A. Weltsch

BILKSI v. KAPPOS
by Paul J. Esatto, Jr.

Hindsight Bias: The Human Condition
by Frank S. DiGiglio

An Opportunity for a Longer Patent Term . . the Wyeth Decision
by Drew R. Berweger and Peter I. Bernstein

Trademark Practice Summary
by Keith A. Weltsch



特許権のより長い存続期間 の機会…..Wyeth 判決

米国連邦巡回控訴裁判所は、特許期間 の調整(Patent Term Adjustment: PTA)の適切な計算方法に ついて、2010年1月7日にWyeth 対Kappos (No. 2009-1120) で判決 に達しました。この判決によって、最 近に特許権を得た特許権者に、米国特 許庁に対して追加の特許期間の要求を 費用の支払いなしですることができる 機会が与えられることとなりました。 また、米国特許庁も米司法省も、この 米国連邦巡回控訴裁判所の判決につい ての再検討はしないと決断しました。
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Accelerated Examination of
Patent Applications

by Michael A. Petrocelli



Scully Scott Ranked
#34 in the U.S.

Intellectual Property Today magazine ranked Scully Scott #34 in the U.S., #5 in the New York Metro area, and #1 on Long Island for patents issued to clients in 2010.


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