Franklin M Smith

Franklin M. Smith

Associate
Frank is a patent attorney with extensive experience in patent, trademark, and copyright acquisition, licensing, enforcement and defense, with broad knowledge of new procedures provided for the American Invents Act. His background in interdisciplinary engineering, including mechanical, civil, materials science, atmospheric oceanic and space science, and computer science engineering, make his skills applicable to a wide range of intellectual property technologies. Frank is also a frequent presenter, writer and researcher on various intellectual property topics.

Education & Credentials

Education

University of Michigan

B.S., Interdisciplinary Engineering, 2008

Western Michigan University Thomas M. Cooley Law School

J.D., Intellectual Property Law, 2013
  • magna cum laude
  • Managing Associate Editor - Thomas M. Cooley Law Review
  • Certificates of Merit: Constitutional Law, Personal and Professional Responsibility, Business Organizations
  • Moot Court Ethics and Professionalism National Team

Bar Admission

  • Michigan

Prominent Assignments

Arguing and eliciting testimony in Federal Court proceedings; preparing for, taking, and defending fact, expert, and third-party depositions; drafting and filing complaints, answers, preliminary injunctions, briefs, summary judgment and other dispositive and non-dispositive motions, pretrial and trial related pleadings, stipulations, settlement agreements, protective orders, claim charts, Markman claim construction briefs and technology tutorial presentations, inter partes review petitions and patent owner responses, and ex parte reexamination requests in patent, trademark, trade dress, and copyright litigation involving:

  • Smart home energy management systems;
  • Consumer electronics;
  • Automotive components and assemblies;
  • Software platforms;
  • Industrial door structures;
  • Toys and youth entertainment products;
  • Camera and optical arrangements;
  • Material processing methods;
  • Casino randomization techniques;
  • Ambient lighting applications; and
  • Various other technologies.

Drafting and prosecuting patent applications, Office Action responses, ex parte appeal briefs, freedom to operate opinions, patentability opinions, and infringement opinions, for companies ranging in size from startup to Fortune 500, in the fields of:

  • Various heat exchangers, LED lighting systems, and optical components;
  • Extrusion processes, hot rolling steel components, and injection molding methods;
  • Food processing and related equipment, including machine sanitization methods and plasma sterilization systems;
  • Keyless entry systems with integrated accelerometers, vehicle suspensions, performance carburetors, truck frame and bed assemblies, roadway construction equipment, vehicle door arrangements and other automotive assemblies, and consumer gaming controllers; and
  • Exercise equipment software networking, social network display platforms, storage and organization products, and business methods.

Negotiating and advising on intellectual property licensing related to:

  • Development of royalty schemes;
  • Allocating territories, customers, and field of use restrictions;
  • Market analysis and intellectual property valuation;
  • Consumer survey assessment; and
  • Preparation of settlement, non-disclosure, and co-existence agreements.

Performed extensive research on the American Invents Act as well as recent Supreme Court precedent to prepare firm-wide presentations on best practices.

Professional Involvement

  • American Intellectual Property Law Association (AIPLA) 
  • Michigan Intellectual Property Law Association (MIPLA)
  • American Bar Association - Young Lawyers Section

Court Admissions

United States Patent and Trademark Office
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