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About Scott
Biography
I am a former Administrative Patent Judge with experience in over 120 inter partes review proceedings. I assist clients with matters before the Patent Trial and Appeal Board, serve as expert legal consultant on PTAB proceedings, and counsel clients on all patent matters.
I host , which provides patent prosecution tools for patent agents and attorneys.
Admitted in DC, Massachusetts, various federal courts, and before the U.S. Patent Trademark Office.
Practice Areas
2
Practice Areas
Intellectual Property
90%
25 years
Patent Application
10%
25 years
Fees and Rates
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Chat withLicenses
Licensed in District of Columbia for 9 years
State: District of Columbia
Acquired: 2016
No misconduct found
Licensed in Massachusetts for 21 years
State: Massachusetts
Acquired: 2004
No misconduct found
Location
Law Offices of Scott E. Kamholz
–, Arlington, VA, 22201
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Experience
Honors
2011
Top Patent Prosecutor, Patent Buddy Top Patent Prosecutors
1997
Predoctoral Fellowship, American Heart Association
1993
Full Scholarship, University of Miami MD/PhD Program
1991
Member, Tau Beta Pi National Engineering Honor Society
Work Experience
2021 - Present
IP Consultant, Scott E. Kamholz
2021 - 2021
Vice President, Intellectual Property, Tessera Therapeutics, Inc.
2017 - 2021
Of Counsel, Covington & Burling LLP
2015 - 2017
Partner, Foley Hoag LLP
2012 - 2015
Administrative Patent Judge, United States Patent & Trademark Office
2012 - 2012
Counsel and Chair, Patent Post-Grant Practice Group, Foley Hoag LLP
2011 - 2012
Counsel and Registered Patent Attorney, Foley Hoag LLP
2005 - 2011
Registered Patent Attorney, Foley Hoag LLP
2001 - 2005
Registered Patent Agent, Foley Hoag LLP
2001 - 2001
Technology Specialist, Foley Hoag LLP
Associations
American Intellectual Property Law Association
Member
American Bar Association
Member
Boston Patent Law Association
Member
Education
N/A
Boston College Law School
J.D.
N/A
University of Miami
B.S.B.E. magna cum laude
N/A
University of Miami
Ph.D.
N/A
University of Miami
M.D.
Speaking Engagements
2017
2017
Dialogues in Research Ethics - University of Miami
The Assault on Drug Patents: Short-Term Gain, Long-Term Harm?
2017
AIPLA Mid-Winter Institute
Claim Construction in Parallel PTAB and District Court Proceedings
2016
Patent Conference VI
Plenary Session Speaker, “Patent Owner Strategies in IPR”
2016
NYIPLA One-Day Patent CLE Seminar
Current Developments in Patent Issues in The Supreme Court, Federal Circuit and PTAB
2016
2016
National Docketing Association Annual Conference
IPR Docketing from Inside to Out
2016
IPO Annual Meeting
PTAB Cases at the Supreme Court
2016
Boston Patent Law Association
Inter Partes Review Proceedings in the Biotech and Pharma Sector
2016
AIPLA Mid-Winter Institute
IPR Plenary Session: “Views from the Bench – Insight from a Former PTAB Judge”
2016
AIPLA 2nd Advanced Summit on Life Sciences Patents
Panelist, “Demystifying the Myth of the PTAB Death Squad for Life Sciences Patents”
2016
Advanced Patent Law Institute
PTAB Practice Tips and Strategies
2016
ACI Paragraph IV Conference
PTAB Chief Judge, Mock Hearing on Parallel Proceedings
2016
4th Annual Naples Patent Law Experts Conference
Panelist, “Post-Grant Proceedings”
2015
Biotech Patent Law Roadshow
Life Science Patents in IPR
2014
Setting Sail in Uncharted Waters: Life Science Companies Prepare for Post-Grant Review
AIA PTAB Trial Proceedings
2013
State of the Board
PTAB Trial and Appeal Practice
2012
Patent Reform 2012
Post-Grant Review
2011
Boston Patent Law Association
Panelist, Patent Reexamination: Past and Future
2010
Wyss Institute, Harvard Univ.
Strong Patents and High-Value Products
2009
Advanced Invention to Venture (AI2V) Workshop
Intellectual Property for Technology Entrepreneurs
2008
EntreTech Forum, Northeastern University
Robotics - One Leg Up on the Competition
2007
Advanced Forum on Biotech Patents
Maximizing Patent Term Extension and Adjustment
Publications
2016
Intellectual Asset Management
What every CIPO needs to know about the PTAB
2016
2015
IP Frontline
The IPR Hearing Really Does Matter
2015
Biopharm International
Are Biopharma Patents Poised on the Post-Grant Chopping Block?
2015
New York Law Journal
Good, Fast and Cheap Certainty: The Case for Patent Office Litigation
2015
Patent, Trademark & Copyright Journal (BNA)
PTAB Judge Returning to Private Practice: Impressive Patent Talent Now at Steady State
2015
Portfolio Media (Law360)
With High Court Mum On Java Copyrights, Is Innovation Safe?
2015
World Intellectual Property Review
BIO 2015: IPR not a ‘death squad’, says former PTAB judge
2015
Portfolio Media (Law360)
Should Trademarks And License Plates Be Treated The Same?
2015
Portfolio Media (Law360)
Foley Hoag Gains Back AIA-Versed Kamholz After PTAB Stint
2015
Portfolio Media (Law360)
Where Do We Stand One Year After Alice?
2012
National Law Journal
Quoted in "Top 10 Things You Should Know About the New Patent Law"
2012
IP Frontline
Low-Fee Search for US PCT Applicants
2012
2011
Foley Hoag Intellectual Property Alert
Ten Features of the New Patent Law Patent Applicants Should Know
2011
Foley Hoag Intellectual Property Alert
Opportunity for Immediate Benefit from Patent Reform
2007
INTELL. PROP. L. & PRAC
Maximizing Patent Term in the United States
2006
2006
INTELL. PROP. TODAY
Patent Term Adjustment for Fun and Profit
Activity
Legal Answers
Legal Guides