William F. Smith

Of Counsel

Seattle
T +1.206.903.2462
F +1.206.624.7317

Overview

Bill Smith is a former administrative patent judge at the United States Patent and Trademark Office (USPTO). He focuses his practice on advising clients in complicated patent matters, including reexamination proceedings, appeals, interferences, post-grant proceedings before the Patent Trial and Appeal Board, and patent litigations.

Bill spent more than 30 years at the USPTO, with the last 19 years as an administrative patent judge (APJ). While serving as an APJ, Bill was responsible for reaching final agency decisions in interferences and on ex parte appeals involving original and reissue applications and reexamination proceedings. The cases assigned to Bill involved diverse technologies, including biotechnology, pharmaceuticals, diagnostics and medical devices. Bill has taught at the Patent Academy at the USPTO; has developed and presented seminars on appeal practice, appeal conferences and claim construction to patent managers and examiners; and frequently addresses bar and professional associations on intellectual property legal topics

Select Experience

  • Served on the team that won an appeal obtaining allowance of Sir Nicholas Wald and Malcolm Law's patent application relating to their invention of the Polypill, which is a blend of several different medications that reduce risk factors for cardiovascular disease. An important aspect of the invention is that the medication is to be given to a broad segment of the population (e.g., everyone over 50) without measuring, or if measured, having only normal levels of, the standard risk factors for cardiovascular disease (such as blood pressure or cholesterol levels). On top of winning the appeal, the team earned for their client a patent term adjustment (PTA) of nearly six years, nearly three years of which were due to the team's victory on appeal.
  • Appointed as special master for Claim Construction Purposes by the U.S. District Court, Northern District of Georgia.
  • Selected as a third-party neutral to decide priority of invention in a patent interference.
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Experience

  • Served on the team that won an appeal obtaining allowance of Sir Nicholas Wald and Malcolm Law's patent application relating to their invention of the Polypill, which is a blend of several different medications that reduce risk factors for cardiovascular disease. An important aspect of the invention is that the medication is to be given to a broad segment of the population (e.g., everyone over 50) without measuring, or if measured, having only normal levels of, the standard risk factors for cardiovascular disease (such as blood pressure or cholesterol levels). On top of winning the appeal, the team earned for their client a patent term adjustment (PTA) of nearly six years, nearly three years of which were due to the team's victory on appeal.
  • Appointed as special master for Claim Construction Purposes by the U.S. District Court, Northern District of Georgia.
  • Selected as a third-party neutral to decide priority of invention in a patent interference.

Recognitions and Memberships

Memberships

  • Intellectual Property Owners Association
    • Vice Chair U.S. Patent Office Practice Committee
  • American Intellectual Property Law Association

Prior Positions

  • United States Patent and Trademark Office
    • Administrative Patent Judge

Admissions

  • U.S. Court of Appeals, Federal Circuit
  • U.S. Patent and Trademark Office, Registration No. 58,346
  • Virginia
  • [Not admitted in Washington]

Education

  • J.D., University of Baltimore School of Law, 1976
  • B.Ch.E., Chemical Engineering, Georgia Institute of Technology, 1972