James Prankerd Smith
Overview
James works with a wide variety of clients, from startups to large corporations, to advise on the whole patenting process, from crystallizing ideas through to obtaining an international patent portfolio. Additionally, he advises on litigation matters including patent opposition before the European Patent Office and has experience with international arbitration proceedings for patent infringement. He is also experienced in assessing standard essentiality, particularly for telecommunications.
Career & Education
- Associate, AmLaw 100 Firm, 2023–2025
- Associate, Leading Intellectual Property Firm, 2019—2023
- Trainee Patent Attorney, Leading European Intellectual Property Law Firm, 2014—2019
- King's College, University of Cambridge, MSci (Hons), 2014
- UK Patent Attorney
- European Patent Attorney
James's Insights
Client Alert | 4 min read | 04.13.26
A New Frontier for Added Subject-Matter at the EPO?
At the European Patent Office (EPO), a recent referral of case T 873/24 from the Technical Board to the Enlarged Board of Appeal may clarify whether last summer’s decision in case G 1/24 on claim interpretation may be extended to the analysis of Added Subject-Matter. Already G 1/24 is impacting the assessment of patentability at the EPO, but should this referral be allowed, G 1/24’s effect on the assessment of added matter could result in a real shake up of the EPO’s notoriously strict assessment of support. Nonetheless, a review of how we got here highlights the value of late arguments during the EPO appeal process.
James's Insights
Client Alert | 4 min read | 04.13.26
A New Frontier for Added Subject-Matter at the EPO?
At the European Patent Office (EPO), a recent referral of case T 873/24 from the Technical Board to the Enlarged Board of Appeal may clarify whether last summer’s decision in case G 1/24 on claim interpretation may be extended to the analysis of Added Subject-Matter. Already G 1/24 is impacting the assessment of patentability at the EPO, but should this referral be allowed, G 1/24’s effect on the assessment of added matter could result in a real shake up of the EPO’s notoriously strict assessment of support. Nonetheless, a review of how we got here highlights the value of late arguments during the EPO appeal process.
