Scully, Scott, Murphy & Presser, P.C.

Focus and practice areas

Intellectual property is the single area this Garden City firm works in. It handles patents, trademarks, copyrights and trade secrets, and it takes on both the registration side and the enforcement side of that work. The clients it names range across individuals, businesses and universities, which puts inventors, brand owners and research institutions under the same roof.

The firm says it works with clients regionally, nationally and internationally from its office in Garden City, New York. In my opinion, a practice that keeps to one field for a long stretch tends to know the procedural detail well, and the breadth of work described here points that way. Patents and trademarks each run on their own filing systems and deadlines, so a firm that does both has to track two sets of rules at once.

Copyright and trade secrets

Alongside patents and trademarks, the firm registers and protects copyrights and trade secrets. Copyright covers original works once they are fixed, and registration adds a formal record that helps in enforcement. Trade secret protection works differently. It depends on keeping valuable information confidential and acting when that information leaks. The firm runs both inside the same intellectual property practice.

How the firm approaches patent work

Patent procurement is a core part of the practice. The firm prepares and files patent applications with the United States Patent and Trademark Office, and it works with international filing through the Patent Cooperation Treaty. That treaty gives applicants one route to seek protection across many countries. National stage decisions come later, country by country, once an applicant decides where protection is worth the cost.

Prosecution of a patent is a back and forth process. An examiner reviews the application, raises objections, and the applicant answers with amendments and argument. Getting a patent granted is one stage of the job. Defending or challenging a granted patent is another, and the firm covers that ground as well.

Enforcement and contested proceedings

The firm represents clients in post-grant proceedings before the Patent Trial and Appeal Board. These include inter partes review, post-grant review, covered business method review and derivation proceedings. In broad terms, these are ways to challenge or defend the claims of an issued patent inside the patent office, on grounds such as prior art or the question of who invented first. Each runs before the office's administrative judges, and each carries its own filing windows and evidence rules.

On the trademark side, the firm handles opposition and cancellation matters before the Trademark Trial and Appeal Board, and it litigates intellectual property disputes in federal court. Registration work includes searches of the trademark registry, applications, and filings under the Madrid System, which lets an owner seek protection in several member countries through one application. A clearance search early on can flag conflicts with existing marks before an applicant commits to a name.

Technical fields the patent team covers

Patent work often turns on the underlying science, so the makeup of a patent team carries weight. The firm's patent professionals work across biotechnology, chemistry, materials science, electronics and computers, internet and e-commerce, mechanical arts, nanotechnology and pharmaceuticals. An examiner tests a claim against what came before, so an attorney who reads the technology closely can frame claims that hold up.

That mix reaches both the life sciences and engineering. A biotechnology or pharmaceutical filing calls for different background reading than a mechanical or software filing, and the firm lists people set up for work at either end. For a client with a chemistry or nanotechnology invention, having a drafter who knows the field can shorten the distance between the lab and a filed application.

How the team is built

The firm lists twelve partners on its Lawyer Profiles page. They are Frank S. DiGiglio, Paul J. Esatto, Jr., Mark J. Cohen, Ph.D., Edward W. Grolz, Steven Fischman, Peter I. Bernstein, M.S., Thomas Spinelli, Xiaochun Zhu, Ph.D., Eunhee Park, Richard L. Catania, M.S., Keith A. Weltsch and Seth Weinfeld.

Several of those names carry science credentials. Two list a Ph.D. and two list a master of science. That fits a patent practice, where attorneys often hold a technical degree alongside their law degree, and it lines up with the range of fields the firm names.

Length of practice and technical grounding

The firm describes more than 50 years of practice in intellectual property law. Its site does not state a specific founding year, so the exact start date stays open. In my opinion, a single-field history of that length usually means the attorneys have worked through many rule changes at the patent and trademark offices, which counts for something once a matter turns contested.

Read together, the parts fit a clear pattern: the firm files patents and trademarks, argues contested proceedings before the PTAB and TTAB, litigates in federal court, and staffs that work with partners who hold degrees in the sciences. The firm carries out that work from a single office in Garden City, New York.