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Scott E. Kamholz M.D., Ph.D.
PTAB Trial Lawyer and Former Judge
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Claimed Lawyer Profile
Biography
Scott Kamholz combines his experience as an Administrative Patent Judge at the U.S. Patent Trial and Appeal Board (PTAB) and background in medicine, biophysics, and engineering to advise clients in the life sciences sector on a variety of complex patent litigation matters and PTAB proceedings. Dr. Kamholz was the first PTAB judge to enter private practice after presiding over AIA trial proceedings from start to finish. He has assisted clients in dozens of PTAB proceedings since returning to private practice.
Practice Area
- Patents
- Patent Appeals, Patent Litigation, Patent Prosecution
Additional Practice Area
- PTAB Trials
Jurisdictions Admitted to Practice
- District of Columbia
- District of Columbia Bar
- Massachusetts
- Massachusetts Board of Bar Overseers
- U.S. Patent & Trademark Office (Agency)
- U.S. Court of Appeals, Federal Circuit
- U.S. Court of Appeals, First Circuit
- U.S. Court of Federal Claims
- U.S. District Court for the District of Massachusetts
- U.S. Supreme Court
Professional Experience
- Head of IP
- Tessera Therapeutics, Inc.
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- Of Counsel
- Covington & Burling LLP
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- Partner
- Foley Hoag LLP
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- Administrative Patent Judge
- Patent Trial and Appeal Board, United States Patent and Trademark Office
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- Member of the Patent Trial and Appeal Board, which reviews adverse decisions of examiners upon applications for patents, reviews appeals of reexaminations, and conducts derivation proceedings, inter partes reviews, and post-grant reviews of patents.
- Registered Patent Attorney
- Foley Hoag LLP
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- Advised clients of all sizes on a range of intellectual property issues.
Education
- University of Miami
- B.S. | Biomedical Engineering
- Honors: Magna cum laude, General Honors, Tau Beta Pi National Engineering Honor Society
- University of Miami
- Ph.D. | Physiology and Biophysics
- Academic Merit
- University of Miami
- M.D.
- Boston College Law School
- J.D
Professional Associations
- Current
- Activities: American Intellectual Property Law Association, Member
- Current
- Activities: American Bar Association, Member
- Current
- Activities: Boston Patent Law Association, Member
Publications
Articles & Publications
- Maximizing Patent Term in the United States
- 2 J. Intell. Prop. L. & Prac. 593 (2007)
- Patent Term Adjustment for Fun and Profit
- Intell. Prop. Today, Aug. 2006, at 24
- The Proscription Against Broadening Claims in Reissue and Reexamination: Conflict Between the Federal Circuit and the Board of Patent Appeals and Interferences
- 88 J. Pat. & Trademark Off. Soc'y 124 (2006)
Certifications
- 2012 Rising Star selectee (declined due to judicial appointment)
- Massachusetts Rising Stars
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