Ryan C. Smith, Ph.D.
Partner
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Phone: +1 619 744 2220
- Duane Morris LLP
750 B Street, Suite 2900
San Diego, CA 92101-4681
USA
Ryan C. Smith, Ph.D. practices in the area of patent law. Dr. Smith has extensive experience in IP due diligence, and U.S. and international patent prosecution in the areas of biotechnology and chemical arts. In addition, he has experience in matters directed to non-infringement, invalidity, and freedom-to-operate analyses, as well as experience in intellectual property due diligence associated with mergers/acquisitions, public offerings and private equity investments. Dr. Smith’s patent strategies have protected several innovative multimillion-dollar drugs including Solosec®, a small-molecule drug for women’s health, and Xiflam™, a small-molecule drug for treating various ocular diseases. Dr. Smith works with entrepreneurs, emerging growth companies, university technology transfer offices, and large public U.S. and international companies to identify and develop comprehensive intellectual property portfolios.
Dr. Smith is experienced with producing work of consequence. For example, his Ph.D. thesis was cited as prior art in Illumina's first patent applications. His work at Illumina was cited by the 2022 Nobel Chemistry Committee in awarding the 2022 Chemistry Nobel Prize. His drafting and successful prosecution of a fluorescent protein for client Allele Biotechnology was asserted against defendant Pfizer for their development of the Covid-19 vaccine without challenge to the patent. Dr. Smith also prosecuted the worldwide patent prosecution of Solosec(TM), only one of twelve drugs at the time to receive an additional five years of regulatory patent exclusivity as a selective antibiotic. Dr. Smith has a demonstrated history of crafting IP of consequence, and therefore of significant value, for his clients.
Prior to entering the practice of law, Dr. Smith was a research scientist at multiple biotechnology companies, including GE Healthcare and Illumina, where he invented a large number of patents fundamental to modern DNA sequencing methods. Dr. Smith was a Postdoctoral Fellow at both Stanford University and IBM-Almaden Research Center, where he researched new polymeric materials for use in semiconductor manufacturing.
Dr. Smith is a graduate of the University of San Diego School of Law. He holds a Ph.D. in Chemistry from the University of California at Berkeley and a B.S. in Chemistry from the University of California at San Diego.
Areas of Practice
- Intellectual Property Law
- Patents
Representative Matters
Represented Quest Diagnostics Inc. in providing IP diligence and negotiation of IP issues in Quest’s $300 million (up to $450 million with milestones) acquisition of Haystack Oncology, a biotechnology company focused on innovative liquid biopsy and tumor-detection technology.
Represented banking clients in capital markets transactions with an aggregate notional market value of more than $1.5 billion for companies in the fields of biotechnology and medical technologies.
Patent Prosecution Counsel to a pharmaceutical company developing pulmonary disease treatments.
Patent Prosecution Counsel to an ophthalmological tools company.
Patent Prosecution Counsel to a biotechnology company focusing on fluorescent protein constructs, PCR methods, and oligonucleotide synthesis.
Patent Prosecution Counsel to a biopharmaceutical company focusing on antibody glyco-engineering, cell-tagging, small molecule anti-viral compounds, and adjuvants.
Patent Prosecution Counsel to multiple academic institutions prosecuting patents in areas of cancer treatment, drug delivery, biopolymers, and bone repair proteins.
Patent Prosecution Counsel to a pharmaceutical company developing small molecule compounds as treatments for cancer.
Patent Prosecution Counsel to an additive manufacturing company designing rocket engine components.
Patent Prosecution Counsel to a biopharmaceutical company focusing on ophthalmological treatments.
Patent Prosecution Counsel to an agricultural biotechnology company.
Admissions
- U.S. Patent and Trademark Office (USPTO)
- California
Education
- University of San Diego School of Law, J.D., 2010
- University of California, Berkeley, Ph.D., Chemistry, 1999
- University of California, San Diego, B.S., Chemistry, 1994
Experience
- Duane Morris LLP
- Partner - UCSD Technology Transfer Office
- Manager, Invention Disclosure Process and Material Transfer Agreements - Illumina, Inc.
- Staff Scientist - GE Healthcare
- Senior R&D Scientist - Stanford University/IBM Corp.
- Postdoctoral Researcher
Professional Activities
- American Chemical Society
- Chair, Law Committee, San Diego Section - American Intellectual Property Law Association
- San Diego Intellectual Property Law Association
Honors and Awards
- Named to the Daily Journal's Top Intellectual Property Lawyers List, 2024
- Named to Best Lawyers "Ones to Watch," 2021-2025
Selected Publications
- Contributor, Duane Morris Life Sciences Law Blog
- Co-author, "USPTO Proposes Significant Fee Increases Impacting Patent Prosecution Practices," Duane Morris Alert, April 24, 2024
- Co-author, "White House Announces Framework for Use of March-In Rights Under the Bayh-Dole Act to Lower Drug Prices," Duane Morris Alert, December 11, 2023
- Quoted, "Illumina Wins Case Against Ftc in Bid to Hold Onto Early Cancer Detection Company Grail," September 1, 2022
- Quoted, "DSM Prevails in Vitamin Patent Case Against China’s Anhui Tiger," Chemical & Engineering News, March 4, 2021
- Co-author, "Playing Your Cards Right: Arguments Against Obviousness Can Be Detrimental for Satisfying the Written Description Requirement," Intellectual Property & Technology Law Journal, 32(9), October 2020
- Co-author, "Highly parallel oligonucleotide purification and functionalization using reversible chemistry," Nucleic Acids Research, 2012 January; 40(1): e4.
Co-author of over 15 peer-reviewed academic publications
- Inventor or co-inventor of over 40 U.S. and foreign patents relating to organic chemistry, DNA sequencing, polymer chemistry, and oligonucleotide chemistry
Selected Speaking Engagements
- Invited instructor, The Business of Biotech, The Scripps Research Institute
- Presenter, "March-In Rights Imperatives," Certified Patent Valuation Analyst Business Development Academy CLE, December 22, 2023
- Speaker, "Patent Fundamentals Bootcamp 2023: An Introduction to Patent Drafting, Prosecution, and Litigation," Practising Law Institute, September 12, 2023
- Clinician, "Clinic II: Patent Amendment Writing, PLI Patent Fundamentals Bootcamp 2022: An Introduction to Patent Drafting, Prosecution, and Litigation," September 14, 2022
- Clinician, "Patent Amendment Writing," Practising Law Institute's Patent Fundamentals Bootcamp 2021, June 2-4, 2021
- Faculty, "Patent Fundamentals Bootcamp 2020: An Introduction to Patent Drafting, Prosecution, and Litigation," Practising Law Institute Webinar, June 2-4, 2020
Speaker, "Layers Upon Layers of Layer Complexity: Simple Chemistry Made Complex by Patent Laws," ACS National Meeting and Expo, San Diego, August 26, 2019
Speaker, "Updates to the 21st Century Cures Act," 8th Annual ALS Research Summit, Stanford, CA, January 2018
- Meeting Organizer, "Studying the Effects of Marijuana Use," AACC-ACS Joint Meeting, San Diego, September 2017
Co-Organizer, and Presider, Chemistry and the Law Symposium, American Chemical Society National Meeting, San Diego, CA, March 2016
- Organizer, "Biosimilars," American Chemical Society San Diego Law Section Meeting at the Scintillon Research Institution, September 2015
- Presenter, "Processing Invention Disclosures at a University Technology Transfer Office," ACS Western Regional Meeting, November 2015
- "Patent Law for the Scientist-Entrepreneur," The Scripps Research Institute, La Jolla, CA 2015
- "Etiology of University Technology Transfer Patents," 5th Annual ALS Research Summit, San Francisco, CA, 2014