Charles E. Smith, Of Counsel

A trained chemist, Charles Smith has over three decades of experience as a patent attorney. Prior to joining Patterson + Sheridan in 2014, he spent over 20 years at ExxonMobil, most recently as the global giant’s chief attorney in its downstream and upstream research companies. At Patterson + Sheridan he continues to work with ExxonMobil as well as clients in the chemical and pharmaceutical industries.

Speaks fluent scientist

After working as a chemist while putting himself through college, Charles was inspired to pursue a law degree by a patent attorney who spoke at a senior seminar. His background as a scientist has served him well as a patent attorney, allowing him to not only understand scientists’ ideas but also to translate complex legal issues when representing a client.

While at ExxonMobil, Charles developed an intimate appreciation for the importance of creating detailed patent strategies early on for any research program. This required not only working closely with scientists but also with key company executives who needed to understand the technology and intellectual property in which they were investing.

A pharmaceutical chemist’s best friend

Charles has also drawn on his background as a chemist to draft numerous pharmaceutical patents, including antipsychotic drugs, antiviral drugs (including HIV protease inhibitors), anti-hypertension agents and anti-inflammatory drugs (including COX-2 inhibitors). His technical background and work experience eliminate the need for pharmaceutical chemists to engage in lengthy explanations of their trials and allows for efficient and effective patent prosecution. One pharmaceutical chemist with whom Charles has worked is the 11th-ranked pharmaceutical chemist in the world for 2015.

Patent prosecutor with unique litigation strategy experience

Many patent prosecutors have little or no experience with litigation or patent office proceedings. During his tenure at ExxonMobil, however, Charles was intimately involved with developing litigation strategy. Although he didn’t try the cases himself, Charles managed and coordinated complex lawsuits and patent proceedings around the world, ensuring an argument presented in one court didn’t put the company at a disadvantage in other legal proceedings, venues or forums. At one point, Charles coordinated 20+ cases against a leading multinational chemical company, including , nine lawsuits and 11 patent proceedings in the United States, the United Kingdom, Germany and Holland.

Additionally, Charles has been involved in approximately 30 interference proceedings before the United States Patent and Trademark Office. Although that proceeding is no longer being used for patents filed after March 16, 2013, Charles applies this significant experience to similar proceedings before administrative patent judges including IPR, PGR and CBM proceedings.

Practice Areas

Education

  • J.D., St. Louis University School of Law,1984
  • B.S., Chemistry, University of Missouri, 1981

Bar Admissions

  • State Bar of Texas
  • United States Patent and Trademark Office