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The Right Way to Calculate Due Dates in Europe and China
If you are docketing in China or Europe, you may notice that calculated due dates don’t match the dates given by your foreign associate. This program will explain why and the proper way to calculate due dates in these countries.
Using Analytics as a Patent Annuity Decision Tool
Join us as our panel discusses best practices for the annuity payment decision process and how patent analytics can help assist annuity decision makers in making the best decisions possible.
IP Punch List for Software Companies
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Schwegman is teaming up with WIPO to host an all-day complimentary "Advanced PCT Training" seminar that will provide insights to practitioners on amendments and recent developments to the PCT rules, developing a strategy for international filings and procedural safeguards.
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Neil Smith
Areas of Practice
  • Electrical & Computers
  • Mechanical & Electromechanical
  • Medical Devices
  • Software & E-Commerce
IP Services
  • Acquisition Due Diligence
  • Licensing
  • Opinions
  • Portfolio Management & Analysis
  • Post-Grant Proceedings
  • Trademarks
Overview
Bar Admissions / Bar Association Activities
Awards and Recognition
Education
Speaking Engagements and Courses
Overview
Overview

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 Admissions / Bar Association Activities
Bar Admissions / Bar Association Activities

BAR ADMISSIONS:

  • District of Columbia
  • California
  • U.S. Court of Appeals for the Federal Circuit
  • U.S. Patent and Trademark Office

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.

Awards and Recognition
Awards and Recognition
  • Named  U.S. IP Litigator of the Year, “Managing Intellectual Property,”
  • Named for over twenty-five years in “The Best Lawyers In America” for Litigation and Patent Law representation.
  • Named in “Guide to World’s Leading Experts in Patent Law”; “Who’s Who of Internet and Electronic Commerce Lawyers”; “The International Who’s Who of Business Lawyers”; “The International Who’s Who of  Trademark Lawyers”; and “Chambers USA,” “America’s Leading Lawyers for Business”
  • Named a SuperLawyer by “Northern California Super Lawyers”
  • First Recipient of U.S. Patent and Trademark Office’s Joseph Rossman Award
  • Named to List of World’s Leading Technology Neutrals by Silicon Valley Arbitration and Mediation Center.

 

Education
Education
  • Masters in Patent Law., George Washington Law School, Washington, DC.
  • J.D. Columbia Law School, Columbia University, New York City, NY.  Stone Scholar.
  • B.S. in Mechanical Engineering, Columbia School of Engineering , New York.  Tau Beta Pi.
  • B.A. in Physical Sciences, Columbia College, New York
Speaking Engagements and Courses
Speaking Engagements and Courses

Speaker on several patent, trademark, unfair competition, privacy, and Internet law subjects to various bar associations, law schools, and IP/law organizations, including:

  • San Francisco Intellectual Property Law Association
  • California, Colorado, Washington State, Ohio, Oregon and Utah State Bar Associations
  • Intellectual Property Associations in Los Angeles, San Diego, Pacific Northwest, and Canada
  • American Patent Institute, Teacher in Patent Bar Review course
  • Practicing Law Institute
  • NITA
  • American Bar Association,  US Copyright Society
  • American Intellectual Property Law Association
  • International Trademark Association
  • Computer Law Association
  • Licensing Executive Society
  • Law schools, including Hastings Law School, Stanford Law School, Golden Gate Law School, Berkeley Law School, Santa Clara Law School
  • American Conference Inst.
  • Testified on the Draft Report of the United States Working Group on Intellectual Property Rights of the National Information Infrastructure Task Force, World Intellectual Property Organization.