Professional Alt Text

Summary

Scott M. Oldham focuses his practice on all areas of intellectual property, including the procurement and enforcement of patent rights in technologies including biomedical, polymers, sensors, thermoelectric, energy components, electrical, electro-mechanical and mechanical arts as well as information technology, software and business methods. He has experience in the evaluation of patent-related issues and rendering of legal opinions relating to patentability, infringement, validity, right-to-use and clearance issues.

Scott prepares and procures trademark applications worldwide, provides legal opinions relating to registrability and infringement, and defends and prosecutes trademark opposition and trademark cancellation proceedings.

Scott evaluates and protects trade secret information and development of trade-secret protection programs. Scott’s practice includes defense and enforcement relating to trade-secret misappropriation. He also procures copyright registrations in the United States and abroad and handles the investigation, defense and prosecution of copyright infringement issues. 

Scott, for example, currently serves as counsel for Schneller LLC, a Transdigm company, which provides a world-class portfolio of engineered decorative materials, including film laminates, reinforced laminates, thermoplastic sheets, utility flooring and an ever-expanding array of custom applications. Schneller, LLC works with nearly all airlines, major aircraft and rail-car manufacturers.

Scott is experienced in the negotiation and preparation of intellectual property license agreements, joint-development and technology agreements. His practice includes the formulation of company strategies for the procurement and protection of intellectual property rights. He develops company policies and procedures for management of intellectual property, including internal and external invention disclosure policies, inventor recognition programs, non-competition, confidentiality, and non-solicitation policies and agreements for employees and third parties. Scott also develops and manages systems for evaluation of intellectual-property rights and due diligence regarding intellectual-property rights acquired or divested in mergers and acquisitions. Additionally, Scott participates in the prosecution and defense of a wide range of intellectual property matters including patent, trademark and copyright infringements, and misappropriation of trade secrets.

Professional History

  • Partner, Hahn Loeser & Parks LLP, 2001-present; Co-Chair, Intellectual Property Team
  • Partner, Oldham & Oldham Co., L.P.A., 1995-2001; Associate, 1991-94; Patent Agent, 1987-91
  • Electrical Patent Examiner, U.S. Patent & Trademark Office, 1984-87
  • Adjunct Professor, Patent, Trademark, Copyright Law and Intellectual Property Licensing, University of Akron Law School
  • Instructor, The University of Akron, School of Law, Akron, Ohio
  • Faculty Member, Ohio Aerospace Institute

Credentials

Education

University of Akron School of Law, J.D., 1991

 

Colorado School of Mines, B.S., Geophysical Engineering, 1983

Community Involvement

YMCA of Akron, Endowment Fund, Board of Trustees, Member

 

Northeast Ohio Software Association, Member

 

University of Akron School of Law, Intellectual Property Advisory Council, Chairman; College Centered Programs, Board Member

 

University of Dayton School of Law, Steering Committee, Member

 

Character Counts! Akron, Former Member

Awards & Distinctions

AV Preeminent®, Martindale-Hubbell

Bar Admissions

State of Ohio, 1991

 

U.S. District Court for the Northern District of Ohio; U.S. Patent and Trademark Office; U.S. Court of Appeals for the Federal Circuit

Memberships & Affiliations

American Bar Association, Member

 

Ohio Bar Association, Member

 

Akron Bar Association, Member

 

Cleveland Intellectual Property Law Association, Member

 

Intellectual Property Advisory Council, University of Akron School of Law, past Chairman, 2000-present