Skip to main content

Alexander G. Roan


[email protected]



Alex assists life science and technology companies of all sizes with a wide variety of domestic and foreign intellectual property matters. Alex’s practice includes the preparation and prosecution of patent applications as well as strategic patent counseling in the form of invalidity and infringement analyses, product clearance studies, and due diligence investigations. He also has experience with trademark registration, post-grant proceedings, and patent litigation, including before the US International Trade Commission. Alex’s experience covers a wide range of technologies, including medical devices, secondary batteries, fuel cells, solar panels, consumer products, manufacturing equipment, software, and electronics.

Before joining Mintz, Alex was an associate in the Boston office of an international law firm. In that role, he handled patent and trademark prosecution, litigation, and patent office matters related to medical devices and complex technologies, including laser-driven light sources, wireless cameras, automated validation software, and machine vision systems.

Alex’s law school program included an IP concentration with a focus on patent law. While attending Suffolk University Law School’s evening program, he was a software quality engineer and documentation specialist with Fresenius Medical Care, where he worked on software development and FDA compliance and enforcement matters. While pursuing his MS in Mechanical Engineering, he researched electrochemical methods for environmentally-friendly metal production and developed expertise in secondary battery and fuel cell technologies in addition to materials science.


Last week, Mintz Member Lisa Adams moderated a panel discussion between in-house attorneys that covered best practices for conducting patent clearances and obtaining non-infringement and invalidity opinions. The panel discussion, which was hosted by the Boston Patent Law Association, focused on key practical considerations that ensure product clearances and opinions are used as effective tools in a comprehensive intellectual property protection strategy.
Read more
This past May, in a highly-anticipated decision, the Supreme Court held in Mission Product Holdings, Inc. v. Tempnology, LLC that a debtor’s rejection of an executory contract under Section 365 of the Bankruptcy Code has the same effect as a breach of contract outside of bankruptcy.  The decision resolves an inter-circuit split on the effect of a bankrupt trademark licensor’s rejection of a trademark license, a question regarded by legal experts in the trademark community as the most significant unresolved legal issue in trademark licensing. 
Read more
A federal district court judge recently applied the recent U.S. Supreme Court decision in WesternGeco LLC v. ION Geophysical Corporation, in which the Supreme Court held that lost profits damages could be awarded for infringement occurring under 35 U.S.C.§ 271(f), to cover damages for direct infringement occurring under 35 U.S.C.§ 271(a) (see our prior post here for an overview of the case and the issues before the Court, and here for an overview of the Court’s June opinion). 
Read more
Section 271 of Title 35 of the United States Code is the statute that codifies unlawful acts of patent infringement.  The most commonly asserted provisions are § 271(a) (direct infringement), § 271(b) (induced infringement), and § 271(c) (contributory infringement).
Read more
In an application of 2017 U.S. Supreme Court precedent in Impressions Products, Inc. v. Lexmark Intern., Inc., the Northern District California in International Fruit Genetics LLC v., No. 4:17-cv-02905-JSW, recently denied a motion to dismiss a claim of patent infringement by holding that the patent exhaustion doctrine did not apply to a sale of a patented product that was outside the scope of the license granted by the patent owner. 
Read more
Read less


  • Member, Boston Intellectual Property Law Association
Read less