DeAnn F. Smith

With over 30 years of patent experience, I understand clients’ IP needs, and effectively protect and monetize their most valuable scientific assets.

DeAnn Smith provides worldwide patent counseling to biotechnology and pharmaceutical companies and academic and research institutions. She advises on matters relating to intellectual property portfolio strategy, including development, management and enforcement of intellectual assets.

DeAnn has a global, strategic patent counseling and transaction practice that includes experience in the subspecialty of patent royalty monetization transactions. As part of this work, DeAnn routinely advises on worldwide patent term extension issues and is actively involved in procuring and enforcing Patent Term Extensions (PTEs) in the US and Japan and Supplementary Patent Certificates (SPCs) in Europe. This includes working with patent counsel in all major European jurisdictions to obtain SPCs, including overseeing appeal litigation in European courts.

DeAnn has also been involved in numerous PTAB proceedings and patent infringement matters, including Section 337 actions before the International Trade Commission.

Related Industries

Related Practices

Education

University of Michigan Law School, J.D.
Michigan State University, B.S. in Biochemistry and Chemistry

Bar and Court Admissions

BAR ADMISSIONS

Massachusetts
Michigan

COURT ADMISSIONS

U.S. Patent & Trademark Office (Agency)
U.S. Court of Appeals for the Federal Circuit

Experience

In addition to her active patent prosecution practice, DeAnn has advised some of the world’s most renowned academic and research institutions with realizing royalty revenues from their valuable IP assets, including:

Dana-Farber Cancer Institute in two royalty monetizations, including its sale of a portion of its royalty interests in various PD-L1 cancer drugs valued at $168 million
Newcastle University, a UK public research university, in its monetization of a portion of its royalty interests in Rubraca
A leading cancer research institute in its monetization of a royalty stream arising out of a prostate cancer drug

DeAnn also represents acquirers of IP assets, including:

RTW Investments and Ji Xing Pharmaceuticals in a royalty monetization and strategic licensing agreement with Cytokinetics related to a next-generation cardiac myosin inhibitor for up to $450 million in upfront and milestone payments

Publications

Federal Circuit Rejects State Sovereign Immunity Defense to Inter Partes Review - June 19, 2019
Supreme Court Holds that Confidential Sales Still Qualify as Patent Prior Art - January 24, 2019
Federal Circuit Nixes PTAB Sovereign Immunity for Saint Regis Mohawk Tribe - July 26, 2018
Implications of SCOTUS Opinions on Constitutionality, Scope of Inter Partes Reviews - May 2, 2018

Foley Hoag Publications

Publication 06/19/2019

Federal Circuit Rejects State Sovereign Immunity Defense to Inter Partes Review

Publication 01/24/2019

Supreme Court Holds that Confidential Sales Still Qualify as Patent Prior Art

Publication 07/26/2018

Federal Circuit Nixes PTAB Sovereign Immunity for Saint Regis Mohawk Tribe

Publication 05/02/2018

Implications of SCOTUS Opinions on Constitutionality, Scope of Inter Partes Reviews

Publication 01/17/2018

Timeliness Determinations for Inter Partes Review Now Subject to Appellate Review

Publication 06/21/2013

First Completed Review Under AIA Procedures Confirms the Patent Office as an Efficient Alternative to District Court Litigation

Honors & Involvement

HONORS

Listed in The Best Lawyers in America (Patent Law)

INVOLVEMENT

Massachusetts, Michigan, and American Bar Associations, Member
American Intellectual Property Law Association (AIPLA)
- Board of Directors (2017-2020)
- Harmonization Task Force Member (2016-2017)
- Co-Chair of International & Foreign Law Committee (2013-2015)
- Vice Chair of Patent Treaties and International Policy (2012-2013)
- Vice Chair of Genetic Resources, Traditional Knowledge & Folklore Committee (2010-2012)
- Chair and Vice Chair of Biotechnology Committee (2004-2009)
Boston Patent Law Association (BPLA), Co-Chair Biotechnology Committee (2017-2019)
Boston Bar Association (BBA), Intellectual Property Section, Co-Chair (2014-2016)
Federal Circuit Bar Association, Member
Association of University Technology Managers (AUTM), Member
PTAB Bar Association, Member

Speaking Engagements

AIPLA Delegate at IP5, Malta (May 2017)
"PTAB/Hatch-Waxman Parallel Proceedings," BPLA Biotechnology Committee Mock Hearing (September 2017)
“ITC Section 337 Investigations: An Alternative Battleground,” AIPLA Corporate Practice Committee Webinar (March 2016)
“Setting Sail in Unchartered Waters: Life Sciences Companies Prepare for Post-Grant Review,” CLE (September 2014)
“Patentable Subject Matter Meets Divided Infringement,” CLE (June 2014)
"Implications and Ramifications for the America Invents Act on Strategic Alliances," LES Boston Chapter (June 2012)
"The Rubber Hits the Road: Prelitigation Assessment and the Decision to Litigate," MassBio IP Forum (June 2012)
"Personalized Medicine: Intellectual Property, FDA Regulation and Reimbursement," AUTM Annual Meeting (March 2012 )
"IP Rights in China: Balancing the Three Ps - Piracy, Politics & Protectionism," MCCA CLE Expo (March 2012)
AIPLA Delegate at 20th Session of WIPO Intergovernmental Committee on Intellectual Property and Genetic Resources (February 2012)