DeAnn F. Smith

  • Partner
  • Boston
  • 617 832 1264 direct
  • 617 832 7000 fax

DeAnn Smith is a registered U.S. patent attorney with over 20 years of experience in obtaining worldwide patent protection for clients and advising on matters relating to intellectual property portfolio strategy, including development, implementation and management of intellectual assets.

DeAnn’s areas of technology expertise include immunology, genomics, proteomics, bio-markers and drug development. She understands the business implications of establishing and implementing intellectual property strategy, having served as in-house counsel for a pharmacogenomic/diagnostic biotechnology client.

In the area of intellectual property disputes, DeAnn has been involved in numerous interference proceedings and patent infringement matters, including Section 337 actions before the International Trade Commission. As part of this work, she regularly offers clients non-infringement, invalidity, validity and clearance opinions.

Before joining Foley Hoag LLP, DeAnn was a partner in the biotechnology/chemistry patent group of another major law firm.

Bars and Court Admissions

  • Massachusetts
  • Michigan
  • U.S. Patent & Trademark Office (Agency)
  • U.S. Court of Appeals, Federal Circuit

professional / civic involvement

  • Massachusetts, Michigan, and American Bar Associations, Member
  • American Intellectual Property Law Association (AIPLA)
    • Vice Chair of Genetic Resources, Traditional Knowledge & Folklore Committee 
    • Past Chair and Vice Chair of Biotechnology Committee (2004-2009)
  • Boston Bar Association, Intellectual Property Section, Co-Chair of Intellectual Property Law (2009-2011) 
  • Boston Patent Law Association, Member

SPEECHES AND CONFERENCES

  • "Intellectual Property Year in Review," Boston Bar Association, Co-Chair and Panel Moderator, January 2011
  • "Section 337 Investigations," 5th International Commercial Law Forum in Shijiazhuang, Chinese Central Government, October 2010
  • "Chemically Complicated: Effective Arguments to Combat "Obvious to Try" Rejections with Respect to Takeda and the Chemical Arts," AIPLA Annual Meeting, October 2010
  • "What You Need to Know Now About ITC Section 337 Investigations," BIO 2010 International Convention, May 2010
  • "Maintaining and Gaining Career Momentum in Spite of the Economic Downturn," American Intellectual Property Law Association, January 2010 
  • Co-Chair, "Intellectual Property Year in Review," Intellectual Property Section of the Boston Bar Association, January 2010
  • "US International Trade Commission (ITC) Section 337 Investigations: A comprehensive overview and case study of a biotechnology-related investigation before the ITC," Corporate Intellectual Property in China, Shanghai 2010, Beijing 2009 
  • "A Case Study of Biotechnology-Related Action Before the International Trade Commission (ITC)," BIO 2008 International Convention, 2008
  • “Evolving Issues in the Written Description Requirement,” Practicing Law Institute, Preparing Patent Legal Opinions, 2006, 2005, 2004
  • Co-Chairperson of the AIPLA “Advanced Chemical and Biotechnology Patent Practice Seminar,” Seattle, St. Louis, Delaware, 2004
  • Lectured on numerous topics relating to biotechnology patent law for the American Intellectual Property Law Association, the Association of University Technology Managers, the Association of European Science and Technology Transfer Professionals, as well as various private groups

publications

  • Profiled as a member of the University of Michigan's Biosciences Network, University of Michigan Philanthropy Network, October 2010
  • Co-author, Facing ITC Investigation? What Chinese Biotechnology Companies Should Know About Patent Litigation in the United States International Trade Commission, Asia Pacific Biotech News (July 2009)
  • Big Pharma Looks to Generics and Biotech for Growth, Managing Intellectual Property Magazine (September 2008)
  • Biotech's Biggest Blockbusters, Managing Intelletual Property Magazine (June 2008)