Patent Portfolio Strategy and Acquisition • Counseling including Patent-related opinions • Patent Post-Grant Review Proceedings • IP licensing • Patent Prosecution including Board Appeals • International Patent Prosecution including PCT and National-stage applications • Trademarks • Trademark Opposition and Cancellation Proceedings •Trademark Prosecution • Patent and Trademark Landscaping and Enforcement advice
Scott D. Balderston, B.E.E., JD, is a registered patent attorney with comprehensive expertise in all phases of intellectual property. In more than 25 years of practice, Scott has developed expertise in a variety of areas including IP litigation, patent portfolio management, counseling, and patent prosecution. Scott has extensive experience working for companies in all stages of development, with a particular interest in working with startup to mid-size companies. Scott has personally prepared and managed hundreds of patent applications, and a similar number of prosecution cases. He also actively engages in trademark prosecution and advice, including trademark opposition matters and related negotiations.
Representative industries in which Scott has direct and in-depth knowledge include telecommunications, medical hardware and devices including sequencing platforms, electric power systems, and a wide variety of computer software. He has worked in large general practice firms, as well as intellectual property boutiques.
Scott’s practice includes significant involvement in IP litigation and related matters. He has served as lead counsel in AIA post-grant review proceedings, including covered business method (CBM) cases. His litigation experience also includes Federal Circuit appeals, Patent Office reexamination and interference proceedings, and federal district court patent litigation. His expertise likewise includes proceedings before the Trademark Trial and Appeal Board. Many of those proceedings have involved millions or greater in at-stake claims. He also has extensive experience conducting licensing transactions on behalf of patent and trademark holders, as well as licensees.
In addition, Scott brings to his clients wide-ranging knowledge of corporate and other matters such as federal bankruptcy and valuation proceedings on behalf of institutional investors. He has likewise provided extensive advice in corporate financings and mergers and acquisitions in which IP has played a significant part.
Scott has broad-ranging experience supporting clients ranging from individual patent applicants, startup companies, expansion-stage entities, universities, privately held companies, and large-scale institutional portfolio holders. The latter include a number of Fortune 100 and 500 companies and other large international entities.
Member, Symbus Law Group, January 2014 - present.
Bar Memberships: Washington D.C., U.S. Patent and Trademark Office
Education: J.D., Cum laude, Univ. of Pennsylvania Law School 1989; Bachelor of Electrical Engineering, Summa Cum Laude, Villanova College 1986.