Experience
Mr. Smith's practice includes litigation and counseling in patent, trademark, copyright , trade secret and unfair competition matters. Mr. Smith has represented a broad range of high-technology, corporate, software, and traditional brick-and-mortar businesses in technology, publishing, multi-media, video game and consumer product businesses, and is a frequent speaker and author on Internet and intellectual property subjects. In addition to traditional IP issues, he has specialized in Internet, gray market and anti-counterfeiting subjects, including ex parte restraining orders and asset freezes.
Mr. Smith He is peer rated AV® by Martindale-Hubbell and has been named multiple times by the California Super Lawyers® magazine in the area of Intellectual Property. He was was also recognized by the prestigious ranking company Chambers and Partners in its 2010 edition of Chambers USA in Intellectual Property: Copyright & Trade Secret.
Prior to joining Ropers Majeski Kohn & Bentley, Mr. Smith was a partner at both Sheppard Mullin and for more than 25 years at an intellectual property boutique firm, where he specialized in the full range of intellectual property matters in trademark, patent, unfair competition and copyright law. Prior to moving to California, he served as a law clerk to Judge Giles S. Rich, Associate Judge, United States Court of Customs and Patent Appeals in Washington, D.C., 1972-1974 (Predecessor to the Court of Appeals for the Federal Circuit). From 1969-1972 he was a Patent Attorney for the United States Atomic Energy Commission in Washington, D.C.
Memberships & Associations
· Panel of Neutrals, International Trademark Association
· Current Officer and Executive Committee Member, State Bar of California, International Law Section
· Board of Directors American Intellectual Property Law Association, Trademark and Trade Name Committee Chairman, Licensing Committee Chairman, etc.
· American Bar Association, PTC Section, Chairman Trademark and Trade Name, and Trade Secret Committee and, Trademark Office Affairs Committees, PTC Section delegate to RICO Committee, Chair of Div. II (Trademarks) and Chair of Div. IV (IP Related Legal Issues)
· Advisory Board of the Patent, Trademark and Copyright Journal of the Bureau of National Affairs
· Executive Committee Member, State Bar of California, Patent and Trademark Section
· Delegate, California State Bar Convention
· U.S. Dept. of Commerce Public Advisory Committee on Trademark Office Affairs
· Trustee, United States Copyright Society
· Board and Treasurer, National Council of Intellectual Property Law Associations
· San Francisco Intellectual Property Law Association (SFIPLA)
Publications
· APPLE'S REQUIRING THAT ITS SOFTWARE BE RUN ONLY ON APPLE COMPUTERS IS NOT COPYRIGHT MISUSE. Apple Inc. v. Psystar Corporation, 658 F.3d 1150 (9th Cir.2011).
State Bar of California, New Matter, volume 37, number 1 - March 1, 2012
Neil A. Smith
Partner Neil Smith authored an article in the official publication of the Intellectual Property Section of the California State Bar.
· MUSIC AND VIDEOSHARING COMPANY HELD NOT LIABLE FOR COPYRIGHT INFRINGEMENT AS INSULATED BY THE DIGITAL MILLENNIUM COPYRIGHT ACT. UMG Recordings, Inc. v. Shelter Capital Partners LLC, ___ F.3d ___, 101 U.S.P.Q.2d 1001, 2011 WL 6357788 (9th Cir. December 20, 2011).
State Bar of California, New Matter, volume 37, number 1 - March 1, 2012
Neil A. Smith
Partner Neil Smith authored an article in the official publication of the Intellectual Property Section of the California State Bar.
· Supreme Court Report. Golan v. Holder, ___ U.S. ___, 101 U.S.P.Q.2d 1297, 2012 WL 125436 (2011).
State Bar of California, New Matter, volume 37, number 1 - March 1, 2012
Neil A. Smith
Partner Neil Smith authored an article in the official publication of the Intellectual Property Section of the California State Bar.
· America Invents Act makes it cheaper and easier to invalidate patents
San Francisco Daily Journal - September 21, 2011
Robert P. Andris, Neil A. Smith
Partners Robert P. Andris and Neil A. Smith co-authored a San Francisco Daily Journal byline article titled, "America Invents Act makes it cheaper and easier to invalidate patents," examining the details and implications of the America Invents Act - legislation that reforms how patents are obtained and enforced in the United States.
· Ninth Circuit Report: Paris Hilton v. Hallmark Cards
State Bar of California, New Matter, volume 35, number 1 - March 6, 2010
Neil A. Smith
California Law allows a celebrity, Paris Hilton, to sue greeting card company, Hallmark, for using her image and catch-phrase in a birthday card.
· Ninth Circuit Report: David Lahoti v. Vericheck, Inc.
State Bar of California, New Matter, volume 35, number 1 - March 6, 2010
Neil A. Smith
Ninth Circuit clarifies anti-cybersquatting law and the law district courts need to apply to determine whether a mark is suggestive or descriptive under the Lanham Act.
· Complex Patent Suits: The Use of Special Masters for Claim Construction
American Bar Association, LandSlide, Volume 2, Number 1 - October 1, 2009
Neil A. Smith
· Ninth Circuit Report: Omega S.A., v. Costco Wholesale Corporation
State Bar of California, New Matter, volume 33, number 4 - September 3, 2008
Neil A. Smith
· Ninth Circuit Report: Leadsinger, Inc. v. BMG Music Publishing, ET Al.
State Bar of California, New Matter, Volume 33, Number 1 - November 1, 2008
Neil A. Smith
· Ninth Circuit Report: ESS Entertainment 2000, Inc. d/b/a Playpen v. Rock Star Video, Inc. et al.
State Bar of California, New Matter, volume 33, number 4 - November 5, 2008
Neil A. Smith
Video game depiction of Los Angeles strip club is not infringement and protected under the first amendment.
· Ninth Circuit Report: Krinsky v. Doe 6
State Bar of California - February 6, 2008
Neil A. Smith
· Ninth Circuit Report: K and N Engineering, Inc. v. Bulat
State Bar of California - December 18, 2007
Neil A. Smith
· The Supreme Court Opens the Door to More Patent Challenges,
State Bar of California, New Matter, volume 32, number 1 - July 2, 2007
Neil A. Smith
· Ninth Circuit Report: Fox v. Dastar Redux
State Bar of California, New Matter, volume 31, number 2 - November 28, 2006
Neil A. Smith
· Ninth Circuit Report: Altera Corp. v. Clear Logic, Inc.
State Bar of California, New Matter, volume 31, number 3 - November 28, 2006
Neil A. Smith
· Ninth Circuit Report: Au-Tomotive Gold, Inc. v. Volkswagen of America, Inc.
State Bar of California, New Matter, volume 31, number 3 - November 28, 2006
Neil A. Smith
Speaking Engagements
· There's An App for That: Trademark Issues in Application Software
May 9, 2012, International Trademark Association 134th Annual Meeting
Presenter: Neil A. Smith
· 27th Annual Intellectual Property Law Conference
March 28-30, 2012, Crystal Gateway Marriott Hotel
Presenter: Neil A. Smith
· Careers in International Law
February 15, 2012, Golden Gate University
Presenter: Neil A. Smith
· Intellectual Property Issues Facing Japanese Companies and Cross Border Business
November 4, 2011, JW Marriott Los Angeles
Presenter: Neil A. Smith
· AIPLA Annual Meeting
October 21-23, 2010, Marriott Wardman Park Hotel
Presenter: Neil A. Smith
· Annual Meeting of the State Bar of California
September 23-26, 2010,
Presenter: Neil A. Smith
News
Oracle/Google Trial Puts Farella Partner in Odd Spot
The Recorder - April 16, 2012
By Ginny LaRoe
Neil A. Smith
Partner Neil Smith was quoted in the article "Oracle/Google Trial Puts Farella Partner in Odd Spot." Smith commented on U.
· Koh Says Apple Didn't Prove Need for Injunction
The Recorder - December 6, 2011
By Amy Miller
Neil A. Smith
Partner Neil Smith commented on Apple Inc.'s likely response to San Jose federal Judge Lucy Koh's recent decision to deny the company's request for preliminary injunction against the sale of Samsung's Tab 10.
· Following Golan Arguments, Experts Define Public Domain, 'Limited Times'
BNA's "Patent, Trademark & Copyright Law Daily" - October 12, 2011
Neil A. Smith
Partner Neil Smith was quoted in the article "Following Golan Arguments, Experts Define Public Domain, 'Limited Times.
· Denied Mark for 'Tweet,' Twitter Pecks Out Complaint
Corporate Counsel - September 20, 2011
By Amy Miller
Neil A. Smith
Partner Neil Smith was quoted in The Recorder article "For Twitter, Delay on 'Tweet' Comes Home to Roost." This article was also syndicated on The Corporate Counsel website.
· For Twitter, Delay on 'Tweet' Comes Home to Roost
The Recorder - September 19, 2011
By Amy Miller
Neil A. Smith
Partner Neil Smith was quoted in The Recorder article "For Twitter, Delay on 'Tweet' Comes Home to Roost." The article discusses Twitter's recent filing of a lawsuit seeking to cancel a registered trademark by an unrelated company that includes the word "tweets.
· Congress approves patent overhaul bill
Reuters - September 8, 2011
By Diane Bartz
Neil A. Smith
Partner Neil Smith was quoted in the Reuters piece "Congress Approves Patent Overhaul Bill" which details the Senate's passage of the America Invents Act patent reform bill.
· ROPERS MAJESKI KOHN & BENTLEY'S RICHARD CHARNLEY AND NEIL SMITH EARN DISTINCTION IN CHAMBERS USA'S 2011 EDITION July 28, 2011
Richard L. Charnley, Neil A. Smith
LOS ANGELES / SAN JOSE, Calif. - July 28, 2011 - Ropers Majeski Kohn & Bentley (RMKB) partners Richard Charnley and Neil Smith have been recognized in the 2011 edition of Chambers USA, the annual publication of prestigious legal ranking company Chambers and Partners.
· Trademark Holders Eye New Domains
The Recorder - July 25, 2011
By Amy Miller
Neil A. Smith
Partner Neil Smith was quoted in the front-page article, "Trademark Holders Eye New Domains," in which he explains that in-house lawyers are currently considering whether or not new Internet domain extensions will take off before deciding how to advise clients.
· PTO Budget Cuts Mean No New Silicon Valley Office
The Recorder - April 26, 2011
By Amy Miller
Neil A. Smith
Partner Neil Smith was quoted in the article, "PTO Budget Cuts Mean No New Silicon Valley Office," which discusses the U.
· How Pac-Man Got Ahead of IP Pack
The Recorder - March 7, 2011
By Amy Miller
Neil A. Smith
IP Partner Neil Smith was quoted in The Recorder front-page article, "How Pac-Man Got Ahead of IP Pack," regarding the history of protecting the Pac-Man copyrights.
· Bertram Rowland, 80, Wrote Pioneering Biotech Patents
The Recorder - November 1, 2010
Neil A. Smith
Neil Smith, a partner in the San Francisco and Silicon Valley offices, discussed the significance of the legal career of Bertram Rowland, who wrote and prosecuted the first patents for gene splicing.
· The Gap Is Not Friends with New Social Media Site Gapnote
Legal Pad - October 1, 2010
By Amy Miller
Neil A. Smith
Partner Neil Smith discusses the trademark dispute between The Gap and Gapnote.com in the article "The Gap Is Not Friend with New Social Media Site Gapnote.
· On The Move
San Francisco Daily Journal - August 9, 2010
Neil A. Smith
· Sheppard, Mullin Loses Litigator Neil Smith to Ropers Majeski
The Recorder - July 20, 2010
By Petra Pasternak
Neil A. Smith
Veteran IP litigator Neil Smith and his move from Sheppard Mullin to RMKB was profiled. Managing Partner Rick Wilson, citing his deep connections in Silicon Valley said, "Neil brings depth and breadth of experience to the firm.
(Also at San Francisco Office)