In a more than 35 year career in technology and law, McCoy Smith has worked in virtually every facet involving the intersection of the two fields: engineer, patent examiner, patent & trademark prosecutor, patent litigator, patent reexamination and opposition proceeding advocate, patent and technology license drafter and negotiator, trusted IP adviser, teacher, author and lecturer. After a 20 year in-house career, preceded by 8 years in private practice and 3 working as a patent examiner for the U.S. government, McCoy again returned to private practice, founding Lex Pan Law to continue to serve clients in the areas of his expertise.
McCoy spent 20 years in legal department of a Fortune 50 multinational technology company as a business unit Intellectual Property specialist. During his 20 years at that company, he handled a wide range of legal matters, including drafting, negotiating and administering a variety of complex technology license and co-development agreements, advising engineers and technology executives on intellectual property rights and giving strategic legal advice on intellectual property protection and patent portfolio development, negotiating agreements around, and conducting legal and technical due diligence on several multi-billion dollar M&A and divestiture transactions, and single-handedly drafting and negotiating a patent cross-license between two Fortune 100 technology companies. In addition, McCoy was instrumental in setting up open source legal and compliance policies for his employer, as well as being an active thought leader and sought-after speaker on open source legal issues for more than 15 years.
Before moving in-house, McCoy spent 8 years in private practice in a large New York-based boutique intellectual property law firm, working simultaneously as a patent litigator and patent prosecutor. As a litigator, he handled numerous discovery matters (including taking and defending depositions) and pre-trial motion practice (including briefing and arguing Markman hearings). As a prosecutor, he prepared and filed patent applications (both utility and design) in a variety of different mechanical and electrical technologies, as well as prosecuted ex parte reexamination proceedings, reissue proceedings, patent reinstatement petitions, and assisted in the conduct of European Patent Office (EPO) opposition proceedings. While in private practice, and continuing into his in-house career, McCoy also taught portions of the U.S. patent bar exam for a long-standing and well-known patent bar exam preparation course.
McCoy began his intellectual property career at the U.S. Patent & Trademark Office (USPTO) as a patent examiner, examining applications (including PCT and reexamination applications) in a variety of different technologies. While working at the USPTO he simultaneously pursued a Master’s degree, at night, in Liberal Arts, and successfully passed the U.S. patent agent’s examination. After passing the agent’s exam, he left the USPTO to attend law school full time.
His law school thesis, Copyright, Suppression, and the Problem of the Unpublished Work: Lessons from the Patent Law, won the 1991 Robert C. Watson Award from the American Intellectual Property Law Association, and demonstrated his long-standing interest in the intersection between patent and copyright law. He is also the author of two chapters in the Oxford University Press publication Open Source Law, Policy and Practice (2023, Amanda Brock, ed.), one on the intersection of copyright law and open source licensing, and one on the intersection of patent law and open source licensing.
For the past 5 years, McCoy been on the editorial board of the Journal of Open Law, Technology & Society (JOLTS), involved in selecting articles for publication, editing articles, and working on the administration of that journal. He is also on the editorial baord of the American Intellectual Property Law Association's Quarterly Journal.
McCoy Smith has degrees from Colorado State University (B.S., Mechanical Engineering, with honors), Johns Hopkins University (Masters of Liberal Arts) and the University of Virginia (J.D.). He is licensed to practice in:
New York (2478428)
United States Patent & Trademark Office (33,097)
Canadian Intellectual Property Office (Patents: 12186; Trademarks: 23286)