Barclay Damon
Barclay Damon

Renato L. Smith

Renato L. Smith

Counsel

p: 315-413-7215

f: 315-703-7363

icon_email rsmith@barclaydamon.com
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Syracuse Office

Barclay Damon Tower
125 East Jefferson Street
Syracuse, New York 13202

Renato Smith is a business and intellectual property attorney with more than 15 years of experience. He takes a special interest in supporting the launch of new businesses and product lines, and Renato helps technology companies build, protect and commercialize IP. A registered patent attorney, Renato has leveraged his patent experience to assist Fortune 500, publicly-traded and start-up companies in the areas of patent portfolio strategy, licensing and complex business transactions. Renato has particular experience in the fields of pharmaceutical products, medical devices, software and telecommunications.

In the planning phase for a new business or product line, Renato has provided guidance to ensure that his clients hold an unbroken chain of title from the inventors and authors. He has also helped his clients implement standard contract forms and procedures to avoid disputes regarding ownership of IP improvements, disclosure of trade secrets and competition by former employees. Also, Renato has performed patent landscape searches to provide reports regarding the patent activity of key competitors in a given market. Based on the searches, Renato has advised clients on how to position their IP and reduce the risk of infringement.

For clients relying upon collaborations, Renato has frequently assisted with joint product development and the in-licensing, out-licensing, cross-licensing and sale of IP and tangible assets. From the LOI or term sheet to the closing, Renato has performed deal work both in the US and abroad, including negotiations with parties in Australia, Germany and Taiwan.

From the start of R&D to the first sale of the product, Renato has counseled clients and has drafted and negotiated numerous agreements and contracts involving confidentiality, patent and trademark licensing, collaboration, technology transfer, asset purchase, sponsored research, software, Software as a Service (SaaS), product development, manufacturing, distribution and brand development. For university spinoffs and company-sponsored research, Renato has handled patent license agreements and SRAs with universities in the fields of medicine, genetics and electronics.

Renato has audited manufacturing operations to assess vulnerabilities to the leaking of confidential information and trade secrets. Based on the auditing, he has developed and implemented corporate confidentiality policies, including guest access protocols, plant signage and IT safeguards.

In M&A transactions, Renato has performed IP due diligence tailored to the risk tolerance and budget of the buyers. The results of the IP due diligence have enabled clients to obtain more favorable deal terms, such as broader indemnification, representations and warranties.

In the area of patent prosecution, Renato has aggressively prosecuted strategic patent applications, expanded patent families through the continuation practice, and drafted diverse claim sets to hedge against expected IPR, non-infringement and invalidity challenges.

Over the course of his career, Renato has drafted hundreds of patent applications for a wide range of inventions in the software, electrical and mechanical fields, including medical devices, surgical systems, telecommunication devices, antennas, software applications, electronic gaming devices and systems, vehicles, power equipment and machinery, computers, consumer appliances, database structures, e-commerce systems and business methods.

Renato has also managed international patent portfolios, performed freedom-to-operate studies and developed defensive strategies for clients charged with patent infringement, including invalidity positions and design-around approaches. Furthermore, Renato has conducted trademark searches, prosecuted trademark applications, and managed domain name strategies and copyright registrations.

Representative Experience

  • Drafted, negotiated and closed a $10 million asset purchase agreement representing a Fortune 500 company in its acquisition of solar power generation sites.
  • Managed international patent portfolios of Fortune 500 companies for an array of product lines, including medical devices, consumer appliances, air purifiers, gaming devices and tractors.
  • Executed design-around strategies for companies charged with patent infringement.
  • Built invalidity defenses for companies charged with patent infringement.
  • Drafted and negotiated multi-million dollar product development and patent license agreements representing pharmaceutical manufacturers.
  • Drafted and negotiated a worldwide brand development agreement for a Fortune 500 consumer product manufacturer.
  • Performed an onsite IP audit of a food manufacturer, and prepared IP procedures and policies for the manufacturer.
  • Conducted IP due diligence for numerous M&A transactions.
  • Performed in-person, contract negotiations in Asia related to the development, manufacture and licensing of electronic products.
  • Co-founded a start-up venture which patented an electronic product, manufactured the product overseas, and successfully brought the product to the marketplace with worldwide sales.

Practice Areas

Education

  • University of Illinois College of Law, J.D., 1997
  • University of Illinois, B.S., 1994

Admitted To Practice

  • Illinois, 1997
  • U.S. Patent and Trademark Office, 1999
  • New York, 2014

Memberships & Affiliations

  • Licensing Executives Society, Member & Program Leader of Western NY Chapter
  • American Intellectual Property Law Association, Member
  • Biomedical Engineering Society, Chair of Tech Launch Program
  • MedTech Association, Committee Member
  • New York State Science & Technology Law Center at Syracuse University, Advisory Board Member
  • Onondaga County Bar Association – Diversity & Inclusion Committee

Speaking & Publications

  • Author & Presenter, “Strategies for Intellectual Property License Agreements – Thorny Issues, Case Law & Drafting Techniques,” New York Continuing Legal Education Program Hosted by Licensing Executives Society at Cornell University, May 2017
  • Co-Author, “A New Pitfall for Licensors of Multicomponent Inventions – the Supreme Court’s Life Techs Decision,” Law360, April 2017
  • Moderator, “Tech Transfer and Licensing - Best Practices in Transferring Technologies from Academia and the Clinic Into Industry,” Biomedical Engineering Society, 2015
  • Presenter, “Open Source Legal Considerations for Proprietary Software Development,” StartFast Venture Accelerator, 2014
  • Co-Author, "Tips to Avoid Patent Disputes in Federal-Private Sector Research Collaborations," 2012
  • Lecturer, "Buying and Selling a Business - Intellectual Property Considerations," Chicago Bar Association Seminar, 2008
  • Co-Presenter, "Intellectual Property Problem Areas In M&A Deals," Mergers and Acquistions Subcommittee of Chicago Bar Association, 2005
  • Author & Presenter, "Creating and Managing IP That Is Tailored To Your Business Objectives," Practising Law Institute, 2005

Prior Experience

  • FisherBroyles, LLP, Partner
  • Originatic LLC, General Counsel
  • K&L Gates LLP, Partner
  • Holleb & Coff, Associate

Alerts

Patent Experience