Scott extends his practice through a diverse array of intellectual property matters, including those associated with patents, trademarks, copyrights, and unfair competition. In doing so, Scott has taken leading roles in litigation, prosecution, right-to-use and freedom to operate opinions, as well as general contractual matters such as licensing of intellectual property rights and preparing joint development and manufacturing agreements.
Scott has overseen the intellectual property portfolios of several companies, where his focus is on maximizing protection in a cost-effective manner appropriate for the particular client's needs. In relation to such matters, Scott often counsels clients on the patentability of inventions and registrability of trademarks and copyrights, while keeping an eye toward reducing the risk of potential infringement claims by others.
Scott also has extensive experience in all phases of litigation, from discovery to trial. His experience is in both Federal Courts, where he has represented clients on patent, trademark, copyright, and trade secret matters, as well as before the Trademark Trial and Appeal Board on trademark matters such as cancellation and opposition proceedings.
Prior forming Charney IP Law, Scott spent over ten years with the largest intellectual property boutique in the state and was a founding member of a smaller intellectual property boutique.
For six years prior to starting his career as an attorney, Scott practiced engineering with a leading civil and environmental engineering firm. During that time Scott earned his license as a Professional Engineer in the State of New Jersey. He currently enjoys status as a retired engineer.
Scott also served as Law Clerk to the Honorable Amy P. Chambers, Superior Court of New Jersey, Presiding Judge, Civil Division, Middlesex County, for the 2000 court term. Scott gained valuable insight to the inner workings of the judicial system while serving as clerk. Scott continues to gain insight as a Barrister in the American Inns of Court.
Scott's enthusiasm is not limited to legal matters. Scott enjoys spending time with his wife and young daughter as well as bicycling and running. Scott is also an avid photographer. Scott balances these activities by serving as a volunteer. Previously, Scott served on the Board of Directors for the Chi Phi Fraternity, the oldest national social fraternity in the country, and was an active volunteer for The JT Foundation, a charitable foundation with the goal of raising awareness for Autism.
Education:
J.D., Seton Hall University School of Law, 2000
B.E., Civil Engineering, Stevens Institute of Technology, 1993
Bar Admissions:
State of New Jersey
State of New York
Registered to practice before the United States Patent and Trademark Office
Licenses:
Professional Engineer, State of New Jersey (retired)
Tom is dedicated to the practice of intellectual property law and is engaged in matters associated with the protection, licensing, and enforcement of patents, trademarks, and copyrights. He is an experienced patent attorney and believes that the preparation and prosecution of a patent is as much of an art as it is a science. In addition to patent prosecution, Tom prepares patentability, freedom-to-operate, and invalidity opinions. He is also involved with substantive due diligence activities in connection with the licensing or purchasing of intellectual property assets.
Tom works with clients both large and small and is equally comfortable counseling individual inventors, start-ups, in-house counsel, investors, and management. He understands that the key to successful growth of a patent portfolio is understanding near-term goals, while keeping sight of the ultimate objective. He also appreciates that no two clients are the same, and each client requires individualized attention and unique strategies to achieve its goals. In that regard, Tom has had great success in growing and leveraging the intellectual property assets of small to mid-sized companies. With Tom's help, these companies received necessary financial backing, not only bolstering their growth, but allowing them to be considered for mergers and acquisitions.
Prior to joining Charney IP Law, Tom worked for a renowned intellectual property boutique for nearly ten years. He has experience at a major pharmaceutical company from both legal and R&D perspectives. Tom also has significant hands-on laboratory experience where he engaged in the total synthesis of organic molecules. His experiences allow him to excel at interacting with scientists and engineers and bridge the gap between the technical world and the legal one.
Outside the practice of law, Tom is a passionate landscape photographer and will often be found lugging his gear to remote reaches to capture the perfect image. Tom also enjoys time spent in the outdoors, especially hiking, trail running, and kayaking.
Education:
J.D., Seton Hall University School of Law, 2005, cum laude
M.S., Synthetic Organic Chemistry, Lehigh University, 2002, summa cum laude
B.S., Chemistry, Lehigh University, 2001, magna cum laude, departmental honors
Bar Admissions:
State of New Jersey
State of New York
Registered to practice before the United States Patent and Trademark Office
U.S. District Court for the District of New Jersey
Affiliations:
American Chemical Society