Smith

DeAnn Smith

Partner
Registered Patent Attorney, Co-Chair, PTAB Proceedings practice group
Boston

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 strategic 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 patent counseling practice which includes litigation and transactional matters. As noted by a client, DeAnn is “timely, thoughtful and appropriately aggressive, she is highly knowledgeable in both law and business. Her instincts and ability to anticipate outcomes are exceptional, making her a highly trusted adviser for the most complicated matters.” 

DeAnn provides worldwide patent portfolio management, competitive landscape analyses, freedom-to-operate assessments, due diligence evaluations and patent opinions. She has substantial experience with inventorship disputes. 

DeAnn routinely advises on worldwide patent term extension issues and is actively involved in appeal level litigation in many major European jurisdictions to obtain highly valuable Supplementary Patent Certificates (SPCs).

DeAnn has been involved in numerous PTAB proceedings, EPO oppositions and appeals, 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., Biochemistry and Chemistry

Bar and Court Admissions

BAR ADMISSIONS

  • Massachusetts
  • Michigan
  • U.S. Patent & Trademark Office (Agency)

COURT ADMISSIONS

  • U.S. Court of Appeals for the Federal Circuit
  • U.S. District Court for the District of Massachusetts

Experience

  • Counsel for Dana-Farber Cancer Institute against Bristol-Myers Squibb and Ono Pharmaceutical, obtaining judgment for Dana-Farber correcting inventorship of six ground-breaking patents directed to PD-1/PD-L1 cancer immunotherapy, making Dana-Farber a co-owner of the patents. Counsel to Dana-Farber on appeal, where district court’s decision was affirmed by the Federal Circuit Court of Appeals, and the Supreme Court denied BMS’s petition for review. Coordinating parallel cases in Europe and Japan .
  • Counsel for a world-renowned cancer research center in obtaining and enforcing Patent Term Extensions and Supplemental Protection Certificates (a type of patent term extension) for patents relating to PD-L1 cancer drugs. This work includes appeal litigation in numerous European courts.
  • Counsel for two leading medical research institutions in patent infringement action and related PTAB proceeding and appeal concerning patent for cancer therapy.
  • Counsel for respondents in ITC investigation concerning two patents related to the use of genetically engineered bacteria to produce lysine. Won ITC ruling invalidating both patents and finding that patent owner had committed inequitable conduct. Federal Circuit affirmance on appeal.
  • Counsel for Dana-Farber Cancer Institute in two royalty monetization transactions, including its sale of a portion of its royalty interests in various PD-L1 cancer drugs valued at $168 million.
  • Counsel for RTW Investments and Ji Xing Pharmaceuticals in a royalty monetization transaction and strategic licensing agreement with Cytokinetics related to a next-generation cardiac myosin inhibitor for up to $450 million in upfront and milestone payments.
  • Counsel for Newcastle University, a UK public research university, in its monetization of a portion of its royalty interests in Rubraca.

Publications

Other 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

Honors & Involvement

HONORS
  • Massachusetts Lawyers Weekly Top Women of Law (2025)
  • Best Lawyers: Patent Law (2023-2027)
  • IAM Patent 1000 (Massachusetts) (2024-2026)
  • Impact Case of the Year, Managing IP 2023 EMEA, Dana-Farber Cancer Institute v. INPI (Paris Court of Appeals 2022)
INVOLVEMENT
  • Massachusetts, Michigan, and American Bar Associations, Member
  • American Bar Association Section of Intellectual Property Law (ABA-IPL)
    • Vice Chair of Attorney Wellness Committee (2023-2024)
    • Vice Chair of Monetization and Valuation of IP Committee (2023-2024)
  • American Intellectual Property Law Association (AIPLA) 
    • Member 101 Task Force (2024 - present)
    • 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 Intellectual Property Law Association (BIPLA), Co-Chair Biotechnology Committee (2017-2019)
  • Boston Bar Association (BBA), Intellectual Property Section, Co-Chair (2014-2016) 
  • Association of University Technology Managers (AUTM), Member 
  • PTAB Bar Association, Member

Speaking Engagements

  •  "Patent Owner's Perspective of the PTAB," PTAB Masters™ 2025 (January 2025)
  • "The Mindfulness Business Charter and Outside Counsel Guidelines for Wellbeing,"  the American Bar Association's Section of Intellectual Property Law (June 2024)
  • "Patenting Inventions when AI is Involved", 2024 ABA-IPL Section Annual Conference (IPLSPRING) (April 2024)
  • "Navigating the Key Life Sciences IP Updates Shaping the Landscape of U.S.-EU Deals: Common Cross Border Due Diligence Pitfalls and How to Avoid Them," ACI Conference: Life Sciences IP Due Diligence (November 2023)
  • 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)

Contact Info

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