Neil A. Smith was a partner at several prominent Bay Area firms, including twenty-five years at IP boutique firm Limbach & Limbach. He was appointed as the first Administrative Patent Judge on the Patent Trial and Appeal Board for the US Patent & Trademark Office’s Silicon Valley Satellite Office.
The PTAB handles appeals within the Patent Office, and a host of post-grant patent proceedings, which are becoming increasingly important in patent law. Neil specializes in the litigation before the PTAB, which includes appeals within the Patent and Trademark Office, and Post Grant Reviews, Inter Partes Review, and Business Method Patent challenges, which are becoming increasingly important in patent enforcement and defense strategy. Neil is a scholar of the use of the Patent Trial and Appeal to challenge the validity of United States patents, particularly where the patents have been asserted in federal court lawsuits around the country, or the subject of cease and desist letters accusing the challenger of patent infringement.
Neil Smith began his career as a patent attorney at the U.S. Atomic Energy Commission, and he then served as a law clerk to Judge Giles Rich on the predecessor to the Federal Circuit Court of Appeals. He is a graduate of Columbia College, Columbia Engineering, and Columbia Law School, in New York , and holds a Masters of Law from George Washington Law School.
Neil has served as officer or leader of most of the important intellectual property lawyer organizations in California. Neil is a former president of the San Francisco Intellectual Property Law Association. He is a former member of the Board of AIPLA, and the US Copyright Society. Neil is currently President of the San Francisco Chapter of Licensing Executives Society. He held several positions in the IP Section of the ABA, and was the first editor of its Annual Review of Intellectual Property Law. He served on the USPTO’s Trademark Public Advisory Committee.
Over his many years of practice in Northern California, Neil Smith has counseled clients and on the protection and licensing/transfer of IP, and was lead counsel in patent, trademark and copyright cases. He successfully litigated, for Sega, the first case involving indirect copyright infringement/contributory copyright infringement, even before the famous Napster case in the California courts. He litigated, through the Ninth Circuit, the first copyright case dealing with the Internet technique of “framing.” He is a specialist in Trademarks, Internet issues and domain names, and litigated the first case dealing with metatags as trademark infringement, for client Playboy. His landmark case for Reebok in the Ninth Circuit set the stage for extraterritorial enforcement of the Lanham Trademark Act, and ex-parte seizures and the attachment of assets. He filed an amicus brief for AIPLA in the U.S. Supreme Court.
In addition to his high-level IP practice for clients, Mr. Smith is using his judicial experience and decades of IP litigation to serve as a special master, mediator, and arbitrator, to help resolve legal and discovery disputes. He serves on several ADR panels, including the US District Court for the Northern District of California, the Federal Circuit Court of Appeals Mediation Panel, FedARB, and does domain name dispute resolution arbitration for the World Intellectual Property Organization. He was recently named a leading technology neutral by the Silicon Valley Arbitration and Mediation Center.
BAR ASSOCIATION ACTIVITIES AND RELATED OFFICES HELD:
Served in the following capacities, among others: President, San Francisco Patent & Trademark Law Association; American Intellectual Property Law Association: Board of Directors, multiple Committee Chairs; American Bar Association, IPL Section: Chairman of several Divisions, and committees, including programs, education, and university IP, IPL Section delegate to ABA Special Committee on Legal Education, ABA RICO Committee; President, San Francisco Chapter, Licensing Executive Society; Member, Advisory Board of the PTC Journal of Bureau of National Affair (Bloomberg); State Bar of California: Executive Committee Member, Intellectual Property Section and Officer and Member of International Law Section, and State Bar Conference of Delegates, Member ADR Committee; Member, USPTO Public Advisory Committee (Trademark); Trustee, United States Copyright Society; Pres. Bay Area Intellectual Property Chapter, American Inns of Court. Appointed Intellectual Property Research Specialist, California Blue Ribbon Task Force on Nanotechnology. Mediation/Arbitration Panels of the US Federal Circuit Court of Appeals, US District Court Northern District of Ca., FedARB, World Intellectual Property Organization, and International Trademark Association.
Speaker on several patent, trademark, unfair competition, privacy, and Internet law subjects to various bar associations, law schools, and IP/law organizations, including: