William D. Schmidt

Education

  • J.D., Touro College of Law, 1993
  • Pharm. D. (Doctor of Pharmacy), Shenandoah University, in conjunction with Weill Cornell Medical College, 2003
  • B.S., Pharmaceutical Sciences, St. John’s University, 1988
Dr. Schmidt focuses his practice on patent, trademark, trade secret, trade dress, and copyright prosecution, licensing, and litigation in the biotechnology, chemistry, pharmaceutical, medical device, and electrical arts.

He has prosecuted a wide variety of patents in those fields, including patents for medical devices, new chemical entities, pharmaceutical formulations, methods of treatments, genetic screening, transformed organisms, modified nucleotides, proteins, bioanalytical methods, binding proteins, receptors, computer and electrical devices and business methods. William has authored numerous freedom-to-operate, patentability, invalidity, infringement and non-infringement opinions, including opinions supporting Paragraph IV certification under the Hatch-Waxman Act.

William also served as Assistant Director of Pharmaceutical Services for a major hospital in the New York City Area and has delivered lectures to physicians, research staff and pharmaceutical companies on various topics in pharmacological practice.

Representative Patent Litigations

  • In re Ciprofloxacin Hydrochloride Antitrust Litigation, 544 F.3d 1323, (Fed. Cir. 2008)
  • In re K-Dur Antitrust Litigation, 338 E Supp. 2d 517 (D.N.J. 2004)
  • In re Tamoxifen Citrate Antitrust Litigation, 222 F. Supp. 2d 326 (2002)
  • Affymetrix, Inc. v. PE Corp. (NY), 219 F. Supp. 2d 390 (S.D.N.Y. 2002)
  • Orchid Biosciences Inc. v. St. Louis University - 198 F.R.D. 670 (S.D. Cal. 2001)

Bar and Court Admissions

  • Registered to practice before the United States Patent and Trademark Office
  • Courts of the State of New York
  • State and Federal Courts of New Jersey

Publications

  • Martha M. Rumore and William D. Schmidt, Drug Discovery and Development, Third Edition, Chapter 22: Intellectual Property in the Drug Discovery Process, CRC Press, December 2, 2019.

  • Scott D. Locke and William D. Schmidt, “Protecting Pharmaceutical Inventions in a KSR World” Franklin Pierce Intellectual Property Law Review Vol. 50 (1) 1-28 (2009)
  • Scott D. Locke and William D. Schmidt, “Business Method Patents: The Challenge of Coping With Ever Changing Standard of Patentability” Fordham Intellectual Property, Media & Entertainment Journal Vol. 18 (5) 1078-1094 (2008)
  • Scott D. Locke and William D. Schmidt Business Methods and Software: Patent Issues, “Business Methods Patents: The Challenge of Coping With Ever Changing Standard of Patentability” Chapter 2 (Amicus Books – The Icfai University Press) (2008)