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RenatoSmith

Partner

"My first step is to stand in the client's shoes––understanding the unique circumstance allows me to most effectively serve the client's legal needs."

Overview

Biography

Renato is an intellectual property and business attorney primarily focused on commercial transactions involving licensing and technology-based products and services. 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 types of contracts, including website and online terms of use, privacy policies, platform services agreements (PSAs), cloud services agreements, software as a service (SaaS) agreements, end user license agreements (EULAs), service level agreements (SLAs), app license agreements, master services agreements (MSAs), and master license agreements (MLAs) as well as agreements involving confidentiality; patent, trademark, and copyright licensing; collaboration; joint development, technology transfers; asset purchases; sponsored research; software; mobile apps; product champions; product development; manufacturing; distribution; brand development; and copyright releases. In drafting and negotiating many of these contracts, Renato addresses cyber risk liabilities, data protection obligations, and compliance with data privacy laws, including the European Union’s General Data Protection Regulation (GDPR), the US Health Insurance Portability and Accountability Act (HIPAA), and the US Family Educational Rights and Privacy Act (FERPA). 

For university spinoffs and company-sponsored research, he handles material transfer agreements, patent license agreements, and sponsored research agreements (SRAs) in the medical, genetics, and electronics industries. Renato has performed deal work both in the United States 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.

Bar Associations

  • New York State Bar Association
  • Onondaga County Bar Association, Diversity and Inclusion Committee

Selected Memberships & Affiliations

  • American Intellectual Property Law Association
  • Biomedical Engineering Society
  • Licensing Executives Society, Western New York Chapter, Program Leader
Experience

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.
  • Drafted and negotiated military supply, development, and license agreements with the governments of Pakistan and Hungary involving radar technologies.
  • 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.

Prior Experience

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

Selected Community Activities

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

Selected Speaking Engagements

  • 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"

Selected Publications & Media

Selected Alerts & Blog Posts

Featured Media

Alerts

FERC Decision on NYS Capacity Market Potentially Limits Renewable Energy Supplier Participation

Alerts

Pre-Employment Drug Testing and Marijuana

Alerts

Governor Cuomo's New Act to Accelerate Renewable Energy Development

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