Joshua P. Smith
Overview
Josh Smith helps corporations and individuals gain a competitive edge in their respective marketplaces through procurement, protection, and enforcement of intellectual property rights. Josh uses his real-world engineering experience to quickly understand the technology behind innovation. At the same time, Josh relies on his project management experience to view that innovation through the lens of business-need to craft and prosecute valuable patents that achieve the client’s overall goals.
Career & Education
- The Chamberlain Group, Inc.
Electrical Systems Engineer, 2004–2008 - Boeing Company
Electrical Design Engineer, 2003–2004
- The Chamberlain Group, Inc.
- University of Illinois, B.S., electrical engineering, 2003
- DePaul University College of Law, J.D., cum laude, 2011
- Illinois
- U.S. Patent and Trademark Office (USPTO)
- U.S. Court of Appeals for the Federal Circuit
Joshua's Insights
Client Alert | 4 min read | 12.29.25
More Than Math: How Desjardins Recognizes AI Innovations as Patent-Eligible Technology
On November 4, 2025, the USPTO in Ex parte Desjardins designated as precedential an earlier Appeals Review Panel (ARP) decision overruling the Patent Trial and Appeal Board (Board), instead holding that claims directed to training a machine learning model are patent-eligible under 35 U.S.C. § 101 when they integrate a mathematical concept into a practical application that improves how the model operates. That precedential designation represents a material shift in legal precedent in the § 101 arena post-Alice, and it has already driven updates to the MPEP and examiner practice. As a result, Desjardins signals an adjustment in practice in favor of AI and software eligibility at the USPTO.
Client Alert | 8 min read | 06.30.25
Client Alert | 3 min read | 06.02.25
Firm News | 8 min read | 08.15.24
Insights
Joshua's Insights
Client Alert | 4 min read | 12.29.25
More Than Math: How Desjardins Recognizes AI Innovations as Patent-Eligible Technology
On November 4, 2025, the USPTO in Ex parte Desjardins designated as precedential an earlier Appeals Review Panel (ARP) decision overruling the Patent Trial and Appeal Board (Board), instead holding that claims directed to training a machine learning model are patent-eligible under 35 U.S.C. § 101 when they integrate a mathematical concept into a practical application that improves how the model operates. That precedential designation represents a material shift in legal precedent in the § 101 arena post-Alice, and it has already driven updates to the MPEP and examiner practice. As a result, Desjardins signals an adjustment in practice in favor of AI and software eligibility at the USPTO.
Client Alert | 8 min read | 06.30.25
Client Alert | 3 min read | 06.02.25
Firm News | 8 min read | 08.15.24
