Rimon

Michael Smith

Associate

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Education

University of California, Berkeley

J.D. 2004

California Institute of Technology

PhD. Organic Chemistry 1986

Texas A&M University

B.S. Chemistry 1981

Previous Experience

Associate / Of Counsel at Morrison & Foerster

Principal Patent Attorney at Novartis Institutes for Biomedical Research (NIBR)

Herbicide research leader at Dow AgroSciences

Bars & Courts

California State Bar

U.S. Patent & Trademarks Office Registration No. 44,422

Languages

  • English

Professional Experience

Michael Smith is an associate in the Intellectual Property (IP) group at Rimon Law. Before he became a patent attorney, Dr. Smith was a research scientist for many years, and he draws on his deep understanding of life sciences and corporate R&D, as well as his extensive legal experience, while assisting each client to develop and implement an IP strategy optimized to meet their unique business needs. He has a track record of helping companies establish strong IP practices and cultures, providing IP guidance to early-stage research projects, capturing inventions at all stages of R&D, drafting and prosecuting patent applications, counseling management on IP-related opportunities and risks, and reviewing and drafting contracts to support both research and licensing.  

Dr. Smith received his Ph.D. in Organic Chemistry from Cal Tech, then spent 15 years at Dow AgroSciences, where he led the herbicide Project Creation chemistry program and developed a deep understanding of chemical technology, corporate R&D processes, and the importance of taking steps to protect IP from the earliest stages of research.  He also passed the USPTO patent bar before starting law school.

At Berkeley School of Law, Dr. Smith focused on intellectual property law, joining the Berkeley Technology Journal and earning the Boalt Law & Technology Certificate.  He began his legal career at Morrison & Foerster’s San Diego office, where he spent seven years working on a diverse range of technologies and legal issues, including patent application drafting and prosecution, patent litigation support, opinion work to guide critical business decisions, IP diligence for licensing transactions, and both offensive and defensive reexaminations of US patents.  

Dr. Smith then went in-house to work for NIBR (the Novartis Institutes for Biomedical Research—the discovery research division of Novartis Pharmaceuticals) in Emeryville CA, where he focused on IP for small-molecule oncology and infectious disease programs.  In addition to obtaining patent protection for development compounds and related inventions, he provided guidance to help early-stage projects avoid IP issues, trained scientists on IP topics, contributed extensively to the Patent department’s practices and guidelines, advised business leaders on IP and related legal issues, provided IP diligence for technology licensing and collaboration projects, and drafted and reviewed contracts and agreements such as MTAs, CDAs, and research collaboration agreements.

Dr. Smith left Novartis after six and a half years to return ‘home’ to San Diego, where he joined Rimôn Law. He now uses his extensive experience to assist clients with a broad range of patent-related and chemistry-related IP needs.

Publications

Donald S. Chisum and Michael G. Smith, “SmithKline: How the Expanding Inherent Anticipation Doctrine Affects Chemical Patents,” Morrison & Foerster IP Newsletter, vol. 1(1), pp. 1-6 (June 2005).

Raj S. Davé and Michael G. Smith, “SmithKline v. Apotex: U.S. Supreme Court Declines Appeal,” Pharmaceutical Law Insight, vol. 2(8), pp. 6-7 (Sept. 2006).

Michael G. Smith, “What Every Chemist Should Know about Patent Law”, Seminar for the Law Committee of the San Diego Section of the American Chemical Society (Sept. 2008).

Michael G. Smith, “Patent Law in China:  Some Recent Changes to Be Aware Of,” presented for Law Committee of the San Diego Section of the ACS (May 2009).

Michael G. Smith, “Exergen v. Walmart Stores,” Presented at the Review of Chemistry Case Law 2008/2009, Law Committee of the San Diego Section of the ACS (Sept. 2009)

Michael G. Smith, “Patentability Standards for Scientists,” presented for the Law Committee of the San Diego Section of the ACS (Jan. 2010).