Scott D. Paul

Scott D. Paul helps companies build and manage valuable patent portfolios across complex and rapidly evolving technologies. During more than twenty-five years of practice, Scott has prosecuted more than 2,000 U.S. patent applications, drafted more than 600 applications, and filed more than 1,000 appeal briefs before the Patent Trial and Appeal Board.

Scott combines substantial prosecution experience with the technical perspective of a former engineer. Before entering the legal profession, he worked as an engineer at Pratt & Whitney, and he holds a degree in materials and mechanical engineering. This background enables him to work directly with inventors, understand technically demanding innovations, and translate those innovations into patent applications and claims directed to their commercially important features.

His prosecution experience encompasses semiconductors, artificial intelligence and large language models, cloud-computing infrastructure, user interfaces, medical devices, robotics, fiber optics, turbine engines, advanced manufacturing, and extended and augmented reality systems. Scott represents multinational corporations, emerging companies, and individual inventors, adapting his approach to each client’s technology, business objectives, and stage of development.

Scott also has extensive experience managing large, active patent portfolios. He has overseen portfolios involving more than 350 pending prosecution matters, conducted invention-harvesting programs and portfolio audits, and coordinated filing strategies across the United States, Europe, and Asia. He focuses on maintaining quality and consistency at scale while helping clients direct prosecution resources toward innovations that support product development and competitive advantage.

When examination reaches an impasse, Scott brings exceptional appellate experience. He has filed and argued more than 1,000 appeals before the PTAB and successfully argued before the U.S. Court of Appeals for the Federal Circuit in In re Distefano, where the court vacated a rejection under the printed-matter doctrine. His appellate experience informs his prosecution strategy from the outset, including how applications are drafted, how examiner rejections are addressed, and how the prosecution record is developed.

Scott earned his B.S. in Materials and Mechanical Engineering from the University of Connecticut and both his J.D., magna cum laude, and M.B.A. from Florida State University. He is registered to practice before the USPTO and admitted before the Federal Circuit.