Nathan Smith is a partner at McDermott Will & Emery LLP and is based in the Firm’s Orange County office.
Nathan focuses his practice on intellectual property portfolio management, competitive market strategies, offensive and defensive intellectual property due diligence, licensing, and domestic and foreign patent prosecution for both utility and design protection. He shapes IP strategies for startups and large cap corporations alike.
His technical experience encompasses a wide range of technologies, including medical devices such as cardiovascular devices and interventions, drug delivery therapies, orthopedic devices, dental devices and procedures, bone fracture fixation devices, spinal devices and procedures, endoscopic devices and procedures, agricultural products and grain management, eyewear, personal electronics, software, automotive, aeronautics, and various mechanical technologies.
Nathan was a judicial extern for Chief Judge Randall R. Rader at the U.S. Court of Appeals for the Federal Circuit.
While earning his B.S. in mechanical engineering from Brigham Young University, Nathan was inducted into Tau Beta Pi Engineering Honor Society. He later earned his J.D. from Brigham Young University Law School, where he was the Senior Editor of the BYU Law Review.
Nathan has authored several articles relating to issues surrounding intellectual property, including utility and design patents, and its enforcement. In addition, he has spoken individually and on panels to public and private groups, including university and medical technology associations, regarding international IP filing strategies, IP portfolio management, the technical aspects of the America Invents Act and procedures before the US Patent and Trademark Office, such as Post-Grant Review.
Representative Intellectual Property Due Diligence Projects
Conducted IP due diligence on behalf of medical device client in connection with its successful $85M initial public offering abroad
Conducted IP due diligence on behalf of AqueSys, Inc., in $43.6 million in Series D financing led by an undisclosed investor, with participation from Accuitive Medical Ventures, The Carlyle Group, Longitude Capital, Rho Ventures and SV Life Sciences
Conducted IP due diligence on behalf of ArtVentive Medical Group, Inc., in a $3M-$5M financing led by an undisclosed investor
Conducted IP due diligence for medical device client in acquisition of another medical device company for over $70M
Conducted IP due diligence for medical device client in acquisition of target cardiovascular device company
Conducted IP due diligence for medical device client to validate IP portfolio of target cardiovascular device company
Conducted IP due diligence for medical device client preliminary to investing in target medical device startup
Memberships & Associations
Nathan is a member of the California State Bar and is registered to practice before the U.S. Patent and Trademark Office.
He has served on Boards of Directors and is a member of various organizations, including AIPLA, OCTANe, and the Orange County Bar Association.
Honors & Awards
Selected as a Top Attorney in intellectual property by the OC Metro Magazine for four consecutive years, 2011–2014
Recipient of the Wiley W. Manuel Award for Pro Bono Legal Services by the State Bar of California, 2013
Nathan is committed to providing representation to those individuals and institutions who cannot afford to hire lawyers. His pro bono work has included representing victims of domestic violence and their families, assisting a foundation that provides therapy to children whose families are unable to afford treatment for Autism Spectrum Disorder, and assisting a foundation that provides therapeutic activity for individuals diagnosed with cystic fibrosis. He also serves as a Supervising Attorney for UC Irvine School of Law’s Pro Bono Program.
Languages spoken: Portuguese, Spanish
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|Award name||Grantor||Date granted|
|Top Attorneys||Orange Coast Magazine||2015|
|Top OC Patent Attorney||OC Metro Magazine||2014|
|Top OC Patent Attorney||OC Metro Magazine||2013|
|Top OC Patent Attorney||OC Metro Magazine||2012|
|Wiley W. Manuel Award for Pro Bono Legal Services||State Bar of California||2012|
|Top OC Patent Attorney||OC Metro Magazine||2011|
|Partner||McDermott Will & Emery||2012 - Present|
|Associate||Knobbe Martens Olson & Bear||2006 - 2012|
|Associate||Stetina Brunda Garred & Brucker||2004 - 2006|
|Association name||Position name||Duration|
|Orange County Bar Association||N/A||2010 - Present|
|OCTANe||N/A||2008 - Present|
|Orange County Patent Law Association||Member||2004 - Present|
|J. Reuben Clark Law Society (Orange County chapter)||N/A||2004 - Present|
|J. Reuben Clark Law Society||Board Member||2008 - 2011|
|MWE Intellectual Property Update||Proceed with Caution: Navigating the Intersection Between Trade Secret and Patent Law||2014|
|Intellectual Property Today||Verbal Description of Patented Design Is Critical to Support Obviousness Holding||2013|
|Daily Journal||The Big Business of Patent Minutiae||2010|
|IP Law 360||The Latest On Patent Eligibility For Process Claims||2008|
|Brigham Young University Law Review||The Shrinkwrap Snafu: Untangling The ‘Extra Element’ In Breach Of Contract Claims Based On Shrinkwrap Licenses||2003|
|Brigham Young University - J. Reuben Clark Law School||Law||JD - Juris Doctor||2004|
|Brigham Young University||Mechanical Engineering||BS - Bachelor of Science||2001|
|MedTech Insight Conference||Patent Update for Medical Device Companies||2011|
|MBA Lecture||International Intellectual Property Tools and Their Strategic Use in Business||2011|
|MBA Lecture||Maximizing International IP Value and Avoiding Pitfalls||2010|
|Intellectual Property Workshop||Intellectual Property||2007|