Ryan C. Smith, Ph.D. practices in the area of intellectual property law. Dr. Smith has extensive experience in IP due diligence, and U.S. and international patent prosecution in the areas of chemistry, biochemistry, molecular biology, immunology, biotechnology, diagnostics (including both methods and devices). 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 a comprehensive intellectual property portfolio.
Prior to entering the practice of law, Dr. Smith was a research scientist at Illumina and Amersham/GE Healthcare, where he was involved in projects utilizing organic chemistry, polymer chemistry, materials science, biomaterials, nanotechnology, semiconductor manufacturing, organic light-emitting diodes, antibody conjugates, oligonucleotide synthesis, molecular biology, medical devices, bioanalytical chemistry and DNA sequencing technologies. He 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 an inventor of a large number of patents fundamental to modern DNA sequencing methods and has co-authored over 16 scientific articles in peer-reviewed journals.
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
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.
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.
- U.S. Patent and Trademark Office
- 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
- Duane Morris LLP
- Associate, 2014-present
- UCSD Technology Transfer Office
- Manager, Invention Disclosure Process and Material Transfer Agreements, 2014
- Illumina, Inc.
- Staff Scientist
- GE Healthcare
- Senior R&D Scientist
- Stanford University/IBM Corp.
- Postdoctoral Researcher
- 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 Best Lawyers "Ones to Watch," in Intellectual Property 2021-2023
- Contributor, Duane Morris Life Sciences Law Blog
- 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
- 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