Barclay Damon
Barclay Damon

Renato 
     Smith

Renato Smith

Partner

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 is an intellectual property and business attorney primarily focused on supporting the launch of new businesses and product lines. In his practice, he assists companies and entrepreneurs with contracts, licensing, complex business transactions, dispute resolution, intellectual property strategies, and the filing and prosecution of patent applications. He has dealt with a wide array of businesses, including those involved with pharmaceuticals, medical devices, health care, telecommunications, consumer products, software, mobile apps, music, and entertainment.

From the start of a business to the first sale, Renato counsels clients and drafts and negotiates numerous agreements involving confidentiality; patent, trademark, and copyright licensing; collaboration; technology transfer; asset purchase; sponsored research; master services; software; Software as a Service (SaaS); cloud services; end user license agreements (EULAs); terms of use; privacy policies; mobile apps; product champions; product development; manufacturing; distribution; brand development; and copyright releases. For university spinoffs and company-sponsored research, he handles material transfer agreements, patent license agreements, and sponsored research agreements (SRAs) in the medicine, genetics, and electronics industries. Renato has performed deal work both in the US and abroad, including negotiations in Australia, Germany, and Taiwan.

Additionally, Renato counsels clients in dispute resolution. For clients in litigation, he leads settlement discussions and drafts and negotiates settlement agreements. In proactive planning, he performs freedom-to-operate analysis to assess the potential for infringement of intellectual property. Renato also develops defensive strategies for clients charged with patent infringement, including invalidity positions and design-around approaches.

Renato has drafted and prosecuted hundreds of patent applications for inventions in the software, electrical, and mechanical industries that include medical devices, surgical systems, telecommunication devices, antennas, software, mobile apps, electronic gaming devices and systems, vehicles, power equipment and machinery, computers, consumer appliances, database structures, e-commerce systems, and business methods.

Representative Experience

  • Drafted, negotiated, and closed a $10 million asset-purchase agreement representing a Fortune 500 company in its acquisition of a solar-power generation site.
  • Led post-suit settlement discussions and drafted and negotiated settlement agreements for clients charged with breach-of-license agreements and intellectual property infringement.
  • 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 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 intellectual-property audit of a food manufacturer and prepared IP procedures and policies for the manufacturer.
  • Conducted IP due diligence for numerous mergers and acquisitions.
  • Performed in-person contract negotiations in Asia related to the development, manufacture, and licensing of electronic products.
  • Co-founded a start-up venture that 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

  • New York State Bar Association
  • Onondaga County Bar Association, Diversity and Inclusion Committee
  • American Intellectual Property Law Association
  • Biomedical Engineering Society
  • Licensing Executives Society, Western New York Chapter, Program Leader

Civic Activities

  • New York State Science & Technology Law Center at Syracuse University, Advisory Board Member

Speaking & Publications

  • Strategic Health Information Exchange Collaborative, “Protecting IP and Avoiding Disputes” Webinar
  • Licensing Executives Society, “Strategies for Intellectual Property License Agreements – Thorny Issues, Case Law, and Drafting Techniques” CLE
  • Biomedical Engineering Society, “Tech Transfer and Licensing: Best Practices in Transferring Technologies From Academia and the Clinic Into Industry,” Moderator
  • StartFast Venture Accelerator, “Open Source Legal Considerations for Proprietary Software Development”
  • Chicago Bar Association, "Buying and Selling a Business: Intellectual Property Considerations"
  • Law360, “New Strategies for Licensing of Multicomponent Inventions”

Prior Experience

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

Alerts

Patent Experience