Brennan, Manna & Diamond

Member

Practice Description and Experience

Scott is a partner in the firm as well as head of the firm's Intellectual Property Practice Group.  Mr. Harders practice focuses on identifying, protecting and exploiting the patent, trade secret, trademark and copyright assets of clients.  He has significant experience before the Board of Patent Appeals and Interferences and has coordinated hundreds of foreign applications through a network of trusted associates.  

Scott's wide range of experience includes:

• Patent
• Trademark
• Copyright
• Trade Secret
• Licensing
• Patent, Trademark and Copyright Litigation
• Patent and accused product analysis to determine infringement
• Preparation of freedom to use, non-infringement and invalidity legal opinions
• Costs conscious management of IP portfolios and development of IP creation and maintenance strategies including IP audits;  assessing and processing invention disclosures;  and prosecuting high-quality patents under quality control standards that reflect current decisions and direction of the U.S. Patent and Trademark Office and reviewing Courts

REPRESENTATIVE MATTERS

Intellectual Property

• Counseled business leaders in the development of comprehensive intellectual property policies, including strong patent filings and selective issuance of key technology patents to reduce costs and maximize legal monopoly.
• Counseled companies during research and development stage and subsequently drafted, filed and prosecuted patent applications to issuance in the U.S. and abroad in a wide variety of technologies.  Representative arts included wireless and wireline communications, digital signal processing, image reproduction and enhancement, medical imaging hardware and image enhancement software, navigational systems, various telephone technologies, biomedical and cosmetic/cosmeceutical inventions.
• Conducted due diligence and advised companies on asset and stock purchases of patent portfolio companies.
• Negotiated numerous patent licenses.
• Represented plaintiff manufacturer and seller of small peptide cosmecutical creams in patent infringement action against competitor and renegade former investor; case settled resolving infringement issues and business disputes on terms favorable to client.
• Represented plaintiff manufacturer and seller of wireless audience response systems in seeking declaratory judgment of patent non-infringement against competitor and;  matter settled quickly after demonstration of non-infringement when competitor granted covenant not to sue.

• Advised purchaser of custom-coded software package regarding copyright ownership when author refused to transfer certain rights to program; negotiated agreement securing purchaser’s needed rights to the software package.
• Represented defendant in copyright infringement suit brought by world's largest computer software company; case settled after U.S. disctrict court denied plaintiff's motion for preliminary injunction.
• Drafted and negotiated copyright agreements to software including assignments, click-wrap licenses, and ASP model services.
• Counseled companies on use of Open Source software and license obligations encountered.

• Advised numerous businesses during the decision to select and federally register trademarks and service marks.
• Represented defendant in trademark infringement suit brought by computer software company; case settled after U.S. district court denied plaintiff’s motion for preliminary injunction.
• Represented multiple business owners in receipt of Cease and Desist letters regarding purported trademark infringement and patent infringement; developed staged response strategies to resolve matters on budget and to owners’ satisfaction.

• Assisted companies in assessing competitor technologies and developing design around alternative solutions.
• Counseled clients in decision to protect software assets through copyright, patent, trade secret and agreement.
• Drafted and negotiated all varieties of intellectual property license, escrow, sale and financing collateral agreements.
• Represented numerous parties in asset purchase, stock purchase and reorganization transactions where patents, trademarks, copyrights and trade secrets were the primary or substantial company assets.
• Represented numerous software companies in identifying risks and obtaining clear title or rights to use software assets.

Education

• University of San Diego, California (J.D., 1998)
• University of Notre Dame (B.S., Electrical Engineering, 1986)

Courts & Bar Associations

• Ohio Bar
• California Bar
• U.S. Patent and Trademark Office
• Cleveland Metropolitan Bar Association
• Cleveland/Akron IP Law Association
• American Intellectual Property Law Association

Professional and Civic Affiliations

• Board member, Greater Cleveland Veteran's Business Resource Council
• Past Chairman, Cleveland Bar Association - IP Section
• Membership Committee, Cleveland Yachting Club
• Coach and fan of various kids sports