Biography
Gregory Smith draws on over 25 years of legal practice through the full patent life cycle, from initial strategy and drafting through post-grant proceedings and opinion work. His deep technical knowledge and depth of experience enable him to provide thorough, trustworthy counsel on both U.S. and international patent portfolios, including protection, evaluation, and enforcement.
Greg regularly drafts and prosecutes U.S. and foreign patent applications and works closely with clients to develop filing strategies aligned with business objectives and global IP considerations. In addition to drafting and prosecution, Greg has substantial experience preparing and prosecuting ex parte reexamination requests before the USPTO and defending issued patents against validity challenges, giving him a comprehensive view of patent strength both before and after grant. This experience informs a prosecution approach that is analytical, forward‑looking, and attentive to potential challenges that may arise later in a patent’s life.
Greg also has a significant opinion-based practice, with particular depth in providing invalidity analyses. He routinely evaluates issued patents in light of prior art and prosecution history, advising clients on patentability, validity, and infringement risks. His work in this area supports a range of client needs, including competitive assessments, portfolio due diligence, and litigation preparedness, and reflects a detailed understanding of how patents are scrutinized in contested settings.
Representative Experience
Greg is formally trained in mechanical engineering, and his legal experience spans a wide range of industries. Over the course of his career, he has worked with innovations across diverse technical disciplines, allowing him to engage efficiently with complex subject matter without being constrained to a narrowly defined technical niche. Clients value his ability to quickly understand new technologies and translate them into clear, defensible patent claims and opinions.
Greg’s work ranges across a variety of technologies, including:
- Adjustable TV Mounts
- Agricultural equipment
- Aircraft and spacecraft parts and systems
- Automated Robotic Inspection Systems
- Automotive filters
- Automotive interiors
- Breast Pumps
- Business Methods and e-commerce
- Flooring
- Hand tools
- Handheld and Fixed Barcode Readers and Systems
- Household cleaning products
- Network cable management
- Pneumatic precision finishing tools, motors, and spindles
- Pneumatic system components
- Razors and Razor Blades
- RFID Sensor Vests and Matrix Membranes
- Sporting good equipment
- Standing Desks
- Traffic bollards and security posts
- Valves
- Process Management Technology
- Wearable Electronic Sensor Devices
Greg also provides counsel to clients in the procurement and prosecution of U.S. and foreign trademarks, in the preparation of trademark availability and infringement opinions and in the drafting and review of trademark-related transactional documents.
Background and Credentials
Greg received a B.S. in mechanical engineering from the University of Colorado and his J.D. from the John Marshall Law School. He is admitted to practice in Illinois, before the United States Patent and Trademark Office, and to the United States District Court for the Northern District of Illinois (trial bar), United States Court of Appeals for the Seventh Circuit, and the United States Court of Appeals for the Federal Circuit. He is a member of the American Intellectual Property Law Association and the Intellectual Property Law Association of Chicago.
Education
- The John Marshall Law School (J.D.)
- University of Colorado (B.S.)
- Mechanical Engineering
Bar Admissions
Publications and Presentations
- "Adapting to the Shift Toward Ex Parte Patent Challenges,” Law360, April 16, 2026.
- "Exploring the WIPO Green Marketplace," Marshall Gerstein Insights, February 2024.
- “What Pet Product Companies Must Know About Intellectual Property: Protecting Your Competitive Advantage,” Co-Presenter, American Pet Products Association (APPA)’s Global Opportunities Education Series Webinar, October 10, 2013.
Community and Professional Involvement
- American Intellectual Property Law Association (AIPLA)
- Intellectual Property Law Association of Chicago (IPLAC)
- ITC Trial Lawyers Association