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Daniel M. Scolnick

Daniel M. Scolnick is a registered patent attorney with Pepper Hamilton LLP, resident in the Berwyn office. Dr. Scolnick concentrates his practice in intellectual property, primarily on intellectual property transactions and counseling, with a substantial portion of his work directed to patent preparation and prosecution, due diligence and licensing matters. Dr. Scolnick also provides litigation support to our patent litigators.

Dr. Scolnick has a wide array technological experience and knowledge from his days as a researcher as well as a patent attorney. His technological experience and knowledge include:

  • molecular biology, pharmaceuticals and organic chemistry, diagnostics, vaccines, protein chemistry, and immunology, medical devices, materials sciences and nanotechnology.
Dr. Scolnick’s clients include venture capital groups, academic institutions, start-up biotechnology companies, Fortune 500 companies, mid-size biotechnology and pharmaceutical companies, and nutritional supplement companies. Dr. Scolnick’s experience, along with his exposure to other areas of technology, allow him to appreciate issues critical to the firm’s biotechnology and life science clients.

Specific examples of Dr. Scolnick’s experience include:

  • evaluating and protecting a patent portfolio for a drug having worldwide annual sales over three billion dollars
  • coordinating with a client the preparation of an adverse event report with the firm’s Health Effects Litigation Practice Group and a public relations response strategy to the same
  • conducting IP due diligence reviews and audits on behalf of pharmaceutical, biopharmaceutical, investors and lenders in preparation for partnering, financing or investments
  • preparing and filing patent applications and securing patents for pharmaceuticals, diagnostics, biologics, nanotechnology and other mechanical devices, including small molecules, peptides, vaccines, protein based therapies, medical devices and nucleotide technologies
  • providing counsel on patent issues relating to product and technology development, including analysis of patent coverage and infringement issues
  • providing assistance to venture capital and investment funds in evaluating potential investment opportunities with biotechnology and pharmaceutical companies in relation to private placements
  • providing legal opinions on issues of patentability, inventorship, ownership, infringement, invalidity, enforceability and freedom to operate.
As a Ph.D. candidate and a post-doctoral fellow at the University of Pennsylvania, Dr. Scolnick acquired extensive experience in the biochemistry, protein chemistry and genetics while cloning and characterizing a novel cell cycle checkpoint gene and characterizing the genetics of neurodegenerative disease in fruit flies. In particular, he regularly investigated and characterized genes and proteins using standard molecular biology and protein chemistry techniques. While at the University of Pennsylvania, Dr. Scolnick also worked in the area of biochemistry related to the isolation, purification and structural characterization of cellular proteins. As an undergraduate he focused on defining the structure and function of anticonvulsants including modeling the drugs to define the areas essential to their activity. Dr. Scolnick’s experience also includes synthesis and analytical work at the University of Pennsylvania’s chemistry department as a summer fellow where he assisted in analyzing synthesis and purification techniques involving nanomaterials, such as “Bucky Balls.” Dr. Scolnick also has authored eight peer-reviewed scientific articles including one that was published in the journal Nature that described the cloning and characterization of a novel cell cycle gene that has been subsequently found to be intricately involved in the progression of many cancers.

Dr. Scolnick received his Ph.D. from the University of Pennsylvania in biochemistry and biophysics in 2000. He received his A.B. from Washington University in St. Louis majoring in chemistry with a concentration in biochemistry in 1995. He received his J.D. from Villanova University School of Law in 2008, magna cum laude, where he was a staff writer of the Villanova Law Review.



Education
B.A. 1995 Washington University in St. Louis
Ph.D. 2000 University of Pennsylvania
J.D. 2008, magna cum laude, Villanova University School of Law; staff writer, Villanova Law Review


Bar Admissions
Admitted to practice in Pennsylvania and before the U.S. Patent and Trademark Office

Daniel M. Scolnick
Associate
Phone: 610.640.7820
Fax: 610.640.7835
scolnickd@pepperlaw.com
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Office(s)
Berwyn

Practice Area(s)
Intellectual Property
Technology and IP Transactions


Articles


FDA’s 'Purple Book' for Biologics—Patents Not Included

Federal Circuit Clarifies Patent Term Adjustment Provisions


Human Genes Are Not Patent Eligible Subject Matter

Paying Your Dues ... Your Maintenance Fees Will Become Significantly More Expensive


Supreme Court Rules Diagnostic Method an Unpatentable Law of Nature

A Primer on the New Patent Law


Federal Circuit Rules that Isolated DNA Molecules Are Patentable Subject Matter

Federal Circuit Tightens Standard for Inequitable Conduct


Applicants Will Be Able to Delay Examination for 12 Months Under New USPTO Pilot Program

FDA Seeking Comment on Biologics Price Competition and Innovation Act of 2009


USPTO Issues New Obviousness Guidelines for Claimed Inventions

Federal Circuit Expands ‘Specification’ Exception for Obviousness-Type Double Patenting Rejections


USPTO Announces PCT-Patent Prosecution Highway Pilot Program

Statements Made to a Foreign Patent Office Can Hurt You


Federal Circuit Rejects USPTO’s Formula for Calculating PTA

False Marking Penalty Is Imposed on a Per-Article Basis


USPTO Provides Small Entities an Opportunity to Move to the Head of the Line

USPTO Changes RCE Docketing: Delayed Prosecution?


Bayh-Dole Act Fails to Rescue University’s Standing in Patent Infringement Suit

Patent Rules Update and Case Law Update - July 29, 2009


Case Law Update and Legislative Update - May 7, 2009

Case Law Update and Legislative Update - April 1, 2009


European Patent Office to Restrict Filings of Divisional Applications

Federal Circuit Strikes Continuation Limits, Remands to District Court to Determine Limits on Claims, RCEs and Applicants' Patentability Searches


Articles


Biosimilars in the New Health Care Legislation - Prepare Now for the New Approval Framework


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