Scott M. Slomowitz

My practice mainly involves the preparation and prosecution of patent applications, including patentability and patent infringement opinion work, as well as trademark preparation and prosecution.  I counsel clients in all matters of intellectual property (IP).  As a former engineer in the military aircraft industry, I have a good understanding of the engineering world and how best to explain IP to many inventors who are engineers.  Working with prime contractors and subcontractors on one side and the military branches on the other in the past, I have a good sense of, and "patience" in, dealing with government agencies, including the U.S. Patent & Trademark Office (USPTO).

The most common question asked is "Can I get a patent on my invention?" I then explain to them the basis of a patent: disclosing to the world how to make and use their invention in sufficient detail so that someone skilled in the art can reproduce it without guessing and assuming the inventor can overcome the hurdles of patentability (novelty and non-obviousness), they are entitled to a patent.  I then explain the patenting process and the costs associated with that process.  If their invention is software-related or computer-implemented, and includes AI, I also explain the additional hurdle of subject matter eligibility and the impact that the U.S. Supreme Court opinion, Alice Corp vs. CLS Bank, has had on patenting such inventions.  My goal is to fully inform the inventor as to what lies ahead.

There is no "one" memorable case of the past year, but it is always exciting when I get the opportunity to inform a first-time inventor of the good news that a Notice of Allowance will issue meaning that USPTO has agreed to allow a patent on the invention.  When you are excited for the inventor, they sense it also, especially when the patent examination was a tough one.  

Working with inventors is so rewarding because they are bright people with great ideas and they just need your guidance on how to move forward with protecting their inventions.  One inventor I work with is dedicated to saving the lives of people in active shooter situations.  He is very prolific in designing inventions to protect people who "shelter-in-place".  Inspired by the first responder heroes in the 9-11 tragedy, he goes all over the country to honor first responders and promote communication among fire fighters and police departments to improve response strategies and response time.  He is truly an inspiration to me, as well as many others, and I am honored to represent him.