Mark Scott

Background

Mark joined Dehns in 2013 after earning a first-class Master’s degree in Chemistry from the University of Oxford. He qualified as a European Patent Attorney and a UK Chartered Patent Attorney in 2017, became an Associate in 2019, and was promoted to Senior Associate in 2023. Mark is also a UPC Representative.

Type of clients and client work

Mark works for a variety of clients, including a variety of large well-known multinational companies as well as a range of SMEs and smaller companies. He has extensive experience of prosecuting patent applications, both in the UK and Europe, as well as handling large patent portfolios with applications in a wide range of territories worldwide. For some clients, including one major multinational company, Mark works directly with inventors to uncover their inventions, drafts patent applications, and then oversees the prosecution process through to grant in many countries simultaneously. Mark is particularly focussed on making sure his client’s IP is commercially relevant to them, and providing practical and cost-effective solutions to any problems which arise during the patent prosecution process.

Mark also has considerable experience of handling post-grant issues, including EPO oppositions and appeals. He has successfully defended and attacked a range of patents at the EPO, including those relation to absorbent articles, oil and gas additives, and natural high potency sweeteners.

Some examples of his EPO opposition and appeal work include:

• EP2739715: Henkel AG & Co. KGaA and The Procter & Gamble Company vs Kimberly-Clark Worldwide, Inc. – defensive opposition against two opponents of this patent relating to antimicrobial cleanings compositions, resulting in maintenance on the basis of the Main Request.
• EP2296763: Fogmaker International AB vs Kidde-Fenwal, Inc. – defensive opposition of this patent relating to foam fire extinguishing compositions, resulting in maintenance on the basis of the Main Request.
• EP2204104: Koninklijke Philips N.V. and DSM IP Assets B.V. vs Spectrum Brands, Inc. – defensive opposition against two opponents of this patent relating to siloxane-impregnated polymeric materials, resulting in maintenance on the basis of the Main Request.
• EP2609167, T2169/17: Kimberly-Clark Worldwide, Inc. vs Henkel IP & Holding GmbH – offensive opposition against this patent relating to polyolefin adhesives, resulting in complete revocation.
• EP2245096: Raytheon Technologies Corporation vs Rolls-Royce Corporation – offensive opposition against this patent relating to composite materials, resulting in complete revocation.
• EP2526778, T0454/19: Unilever PLC vs The Coca-Cola Company – defensive opposition of this patent relating to natural sweeteners, resulting in maintenance of the patent in amended form.

Expertise

Mark has experience in many different technical areas of chemistry and material science, including: pharmaceuticals, specialty chemicals (polymers and polymer additives such as antioxidants, lubricants, and fire-retardant compositions), refrigerants, food and beverage sweeteners, personal care products and absorbent articles, combustion-free aerosol-generating materials, oil field technology, paints, OLEDs and solar cells.

Qualifications and Memberships

• Authorised Representative before the Unified Patent Court (UPC) 2023
• European Patent Attorney, 2017
• UK Registered Patent Attorney, 2017
• Fellow of the Chartered Institute of Patent Attorneys
• Intellectual Property Law Post-Graduate Certificate, 2013 (Brunel University)

Higher Education

MChem, University of Oxford, 2013

Mark’s final year was spent on a research project investigating the synthesis of Transition Metal Alkane Complexes