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Scott Petty is a partner in our Intellectual Property Counseling practice. As a patent lawyer, Scott helps businesses to protect and realize value from their inventions, brands and logos, proprietary software and trade secrets.

Scott works with companies to manage and create patent and brand name protection programs that align with their strategic business plans. He helps businesses extract value from their patent portfolios through licensing, technology exchanges and asset transfers. Scott also drafts and negotiates patent and trademark licenses, software licenses, technology transaction agreements, joint development agreements, and information technology and hosting services agreements.

In support of technology transactions, Scott conducts legal due diligence assessments of IP assets, proprietary software programs, open source licensed software and information technology systems. He also counsels businesses about the patent policies of standards-setting organizations and industry trade groups, including disclosure and license requirements for essential patent claims.

Scott provides strategic IP counsel and directs patent and trademark protection programs for a variety of large- and mid-sized businesses, including financial technology providers and financial institutions, logistics and transportation businesses, energy companies, and information technology suppliers. He also helps early-stage technology ventures to protect their key innovations and brands, and has worked with entrepreneurs at Georgia Tech’s business incubator, the Advanced Technology Development Center.

An author and lecturer on IP law and patent issues, Scott has received recognition from Chambers USA, The Best Lawyers in America and IAM Patent 1000, among others.

Scott received a Bachelor of Electrical Engineering, Master of Science in Electrical Engineering and Master of Science in Management, all from the Georgia Institute of Technology, and a Juris Doctor from Georgia State University College of Law.

 

 

 

Full Bio

Credentials

J.D., Georgia State University, cum laude

M.B.A., Georgia Institute of Technology

M.S.E.E., Georgia Institute of Technology

B.E.E., Georgia Institute of Technology

Georgia

U.S. Patent and Trademark Office

Atlanta Bar Association

State Bar of Georgia

U.S. Patent & Trademark Office, Reg. No. 35,645

Chambers USA

The Best Lawyers In America (16 consecutive years)

IAM Patent 1000

Outstanding Young Alumnus Award


Georgia Institute of Technology

Distinguished Council for Young Engineering Alumni recognition


Georgia Tech’s College of Engineering

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Recognition

Chambers USA

The Best Lawyers In America (16 consecutive years)

IAM Patent 1000

Outstanding Young Alumnus Award


Georgia Institute of Technology

Distinguished Council for Young Engineering Alumni recognition


Georgia Tech’s College of Engineering

Matters

Conducted pre-litigation counseling, prepared formal opinions on patent invalidity and non-infringement and developed product roadmaps to “design-around” patent infringement claims.

Developed license compliance strategies for the development and commercial distribution of software products featuring a combination of open source licensed software and proprietary software.

Drafted and negotiated intellectual-property-related agreements for a variety of technology transactions, including license agreements, joint product development agreements, consulting agreements and nondisclosure agreements.

Prosecuted ex parte and inter partes reexamination proceedings before the U.S. Patent & Trademark Office.

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Matters

Conducted pre-litigation counseling, prepared formal opinions on patent invalidity and non-infringement and developed product roadmaps to “design-around” patent infringement claims.

Developed license compliance strategies for the development and commercial distribution of software products featuring a combination of open source licensed software and proprietary software.

Drafted and negotiated intellectual-property-related agreements for a variety of technology transactions, including license agreements, joint product development agreements, consulting agreements and nondisclosure agreements.

Prosecuted ex parte and inter partes reexamination proceedings before the U.S. Patent & Trademark Office.

Helped clients to obtain U.S. and foreign patents in the technical fields of cellular mobile radiotelephones, Internet telephony, computer network security, medical devices, data and voice communications, and twisted pair and optical fiber cables.

Counseled clients on strategic intellectual property issues for the energy, FinTech, IT and logistics and transportation industries.

Defended clients in successfully traversing and resolving patent infringement assertions made by nonpracticing entities and patent holding companies.

Prepared an updated patent policy for the disclosure and licensing of essential patent claims for a standards-setting organization, and counseled businesses on the patent policies of various SSOs and industry trade groups.

Created and managed a patent program for a national financial services institution to protect innovations in the fields of Check 21 and Automated Clearing House transaction processing services.

Pursued U.S. and international patent protection for a global investment banking and financial services firm in connection with its innovative financial products and services and information technology inventions.

Drafted and prosecuted patents for a leading creator and distributor of social expression products to protect its innovative methodologies for marketing and displaying greeting card products.

Conducted acquisition and investment-related due diligence assessments on behalf of a large logistics / transportations company to evaluate intellectual property portfolios and technologies of target companies.

Prepared and negotiated intellectual-property-related agreements for numerous investment and acquisition transactions.

Created and managed patent portfolio program for a nationally recognized financial services institution.

Obtained patent protection for technological and business process advances made by an international airline.

Managed the strategic growth of a patent portfolio held by a leading manufacturer of fiber optic and cabling products for a variety of innovative data communication cable products and manufacturing processes.

Pursued accelerated examination of U.S. utility patent applications before the U.S. Patent & Trademark Office under newly implemented examination guidelines governing the Patent Office’s expedited examination procedures.

Assisted an internet security company in seeking patent protection for software programs and technologies that assess vulnerabilities of computer networks to unauthorized intrusions and protect host computers and computer networks from unauthorized intrusions and rogue software programs.

Prepared and prosecuted U.S. and international patent applications on behalf of university research foundations for a variety of technologies developed in academic research laboratories.

Obtained patent protection for an electronic defense company in connection with its technological advances in the fields of satellite communications and microwave and radio frequency subsystems and devices.

Served as intellectual property counsel for a textiles manufacturer by assisting strategic patent and brand name protection initiatives and managing the company’s extensive U.S. and international patent and trademark portfolios.

Conducted “freedom to operate” product clearance evaluations to assist an international product manufacturer with its commercial introduction of new consumer product designs.

Drafted and negotiated a complex technology and intellectual property license agreement on behalf of an international provider of vehicle navigation products and services for a patent portfolio covering personal navigation device technology.

Developed an updated patent policy governing the disclosure of essential patent claims to a technology standards organization in connection with the creation by industry members of new technology standards.

Protected an early-stage technology company’s foundation technology platform for evaluating highway traffic patterns based on active monitoring of cellular telephony activity for cell sites located proximate to heavy vehicle traffic areas.

Assisted an entrepreneur’s pursuit of comprehensive patent protection for innovative processes for encouraging consumers to view and respond to broadcast television advertisements.

Matters

Conducted pre-litigation counseling, prepared formal opinions on patent invalidity and non-infringement and developed product roadmaps to “design-around” patent infringement claims.

Developed license compliance strategies for the development and commercial distribution of software products featuring a combination of open source licensed software and proprietary software.

Drafted and negotiated intellectual-property-related agreements for a variety of technology transactions, including license agreements, joint product development agreements, consulting agreements and nondisclosure agreements.

Prosecuted ex parte and inter partes reexamination proceedings before the U.S. Patent & Trademark Office.

See more
Icon close

Close

Matters

Conducted pre-litigation counseling, prepared formal opinions on patent invalidity and non-infringement and developed product roadmaps to “design-around” patent infringement claims.

Developed license compliance strategies for the development and commercial distribution of software products featuring a combination of open source licensed software and proprietary software.

Drafted and negotiated intellectual-property-related agreements for a variety of technology transactions, including license agreements, joint product development agreements, consulting agreements and nondisclosure agreements.

Prosecuted ex parte and inter partes reexamination proceedings before the U.S. Patent & Trademark Office.

Helped clients to obtain U.S. and foreign patents in the technical fields of cellular mobile radiotelephones, Internet telephony, computer network security, medical devices, data and voice communications, and twisted pair and optical fiber cables.

Counseled clients on strategic intellectual property issues for the energy, FinTech, IT and logistics and transportation industries.

Defended clients in successfully traversing and resolving patent infringement assertions made by nonpracticing entities and patent holding companies.

Prepared an updated patent policy for the disclosure and licensing of essential patent claims for a standards-setting organization, and counseled businesses on the patent policies of various SSOs and industry trade groups.

Created and managed a patent program for a national financial services institution to protect innovations in the fields of Check 21 and Automated Clearing House transaction processing services.

Pursued U.S. and international patent protection for a global investment banking and financial services firm in connection with its innovative financial products and services and information technology inventions.

Drafted and prosecuted patents for a leading creator and distributor of social expression products to protect its innovative methodologies for marketing and displaying greeting card products.

Conducted acquisition and investment-related due diligence assessments on behalf of a large logistics / transportations company to evaluate intellectual property portfolios and technologies of target companies.

Prepared and negotiated intellectual-property-related agreements for numerous investment and acquisition transactions.

Created and managed patent portfolio program for a nationally recognized financial services institution.

Obtained patent protection for technological and business process advances made by an international airline.

Managed the strategic growth of a patent portfolio held by a leading manufacturer of fiber optic and cabling products for a variety of innovative data communication cable products and manufacturing processes.

Pursued accelerated examination of U.S. utility patent applications before the U.S. Patent & Trademark Office under newly implemented examination guidelines governing the Patent Office’s expedited examination procedures.

Assisted an internet security company in seeking patent protection for software programs and technologies that assess vulnerabilities of computer networks to unauthorized intrusions and protect host computers and computer networks from unauthorized intrusions and rogue software programs.

Prepared and prosecuted U.S. and international patent applications on behalf of university research foundations for a variety of technologies developed in academic research laboratories.

Obtained patent protection for an electronic defense company in connection with its technological advances in the fields of satellite communications and microwave and radio frequency subsystems and devices.

Served as intellectual property counsel for a textiles manufacturer by assisting strategic patent and brand name protection initiatives and managing the company’s extensive U.S. and international patent and trademark portfolios.

Conducted “freedom to operate” product clearance evaluations to assist an international product manufacturer with its commercial introduction of new consumer product designs.

Drafted and negotiated a complex technology and intellectual property license agreement on behalf of an international provider of vehicle navigation products and services for a patent portfolio covering personal navigation device technology.

Developed an updated patent policy governing the disclosure of essential patent claims to a technology standards organization in connection with the creation by industry members of new technology standards.

Protected an early-stage technology company’s foundation technology platform for evaluating highway traffic patterns based on active monitoring of cellular telephony activity for cell sites located proximate to heavy vehicle traffic areas.

Assisted an entrepreneur’s pursuit of comprehensive patent protection for innovative processes for encouraging consumers to view and respond to broadcast television advertisements.

Credentials

J.D., Georgia State University, cum laude

M.B.A., Georgia Institute of Technology

M.S.E.E., Georgia Institute of Technology

B.E.E., Georgia Institute of Technology

Georgia

U.S. Patent and Trademark Office

Atlanta Bar Association

State Bar of Georgia

U.S. Patent & Trademark Office, Reg. No. 35,645

Chambers USA

The Best Lawyers In America (16 consecutive years)

IAM Patent 1000

Outstanding Young Alumnus Award


Georgia Institute of Technology

Distinguished Council for Young Engineering Alumni recognition


Georgia Tech’s College of Engineering

Icon close

Close

Recognition

Chambers USA

The Best Lawyers In America (16 consecutive years)

IAM Patent 1000

Outstanding Young Alumnus Award


Georgia Institute of Technology

Distinguished Council for Young Engineering Alumni recognition


Georgia Tech’s College of Engineering