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Lisa Adams

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[email protected]

+1.617.348.3054

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Lisa is an esteemed intellectual property attorney whose practice encompasses all areas of intellectual property. She advises clients on a wide range of IP matters including strategic patent portfolio development, clearance to market analyses, acquisitions, diligence, and post-grant proceedings at the US Patent and Trademark Office. Start-ups to Fortune 500 companies in the medical technology, life sciences, energy and sustainability, manufacturing, and technology sectors rely on her counsel. She is known as a skilled strategist who becomes deeply familiar with her clients’ businesses and goals.

Lisa is an experienced patent and trademark attorney known for her forthrightness and strategic approach. She and her team help clients protect their innovations in medical technology and life sciences, robotics, mechanical products and processes, chemical and materials science, electrochemistry, injection molding equipment and tooling, and multi-layer technology. Named among the Top 250 Women in IP by Managing Intellectual Property, Lisa’s clients include start-ups as well as large companies.

Lisa represents clients in patent prosecution and strategy, including patentability evaluations, the preparation and prosecution of patent applications, and post-grant proceedings. Clients value her unique approach to strategic portfolio development, including portfolio mapping.  She advises clients on freedom to operate, performing clearance studies and conducting due diligence. Lisa is the go-to attorney for freedom to operate opinions for one of her Fortune 500 clients. 

She approaches all aspects of her practice with an emphasis on strategy and client communication. Her clients can expect deep knowledge of the company targets and goals, as well as directness as to whether or not new products can be used in the marketplace or would risk being challenged. In addition, Lisa communicates regularly with her clients, so that all parties involved can stay up to date on industry news and potential competitors.

Lisa is active in the patent bar community, serving as the former President of the Boston Patent Law Association (BPLA), currently serving as the Medical Devices committee chair, and serving as a Co-Chair of the Mechanical Practice Committee of the American Intellectual Property Law Association (AIPLA).  Lisa is also involved in various pro bono projects, working with the Volunteer Lawyers for the Arts of Massachusetts and the United Way, for which she previously served as the Vice Chair of the Women’s Initiative Education branch.  Each year Lisa hosts a volunteer day at Cradles to Crayons on behalf of the Women’s Initiative of the AIPLA.

Lisa is an esteemed intellectual property attorney whose practice encompasses all areas of intellectual property. She advises clients on a wide range of IP matters including strategic patent portfolio development, clearance to market analyses, acquisitions, diligence, and post-grant proceedings at the US Patent and Trademark Office. Start-ups to Fortune 500 companies in the medical technology, life sciences, energy and sustainability, manufacturing, and technology sectors rely on her counsel. She is known as a skilled strategist who becomes deeply familiar with her clients’ businesses and goals.

Experience

  • Represent private equity-owned Wayne Fueling Systems, formerly a division of General Electric, which manufactures fuel dispensers for petroleum retailers and commercial fleets, and compressed natural gas fueling pumps. Mintz handles worldwide patent and trademark strategy and prosecution, and enforces those protections in the US and abroad. The firm's relationship attorney serves as outside patent counsel and sits on the patent review committee, working directly with the company's stakeholders in developing patent strategy.
  • Advised medical device client on developing and implementing a post-litigation strategy. Having lost a patent litigation (in which they were represented by another law firm), Mintz attorneys helped the company assess whether they could keep their product on the market during the appeal process. We then provided advice on how to create possible design-arounds for the product to ensure it was clear of infringing the patents at issue, in the event that the appeal was unsuccessful.
  • Developed an IP strategy for a start-up company that designed a cap for user in monitoring compliance for inhalers to treat asthma. Built a successful portfolio based on the strategy, which led to a successful exit.
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viewpoints

Best Practices for Clearances and Opinions

March 31, 2021 | Blog | By Lisa Adams, Alexander Roan

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.
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How the CARES Act Affects Patent Related Deadlines

April 27, 2020 | Blog | By Lisa Adams, Nicholas Eadie

In accordance with the CARES (Coronavirus Aid, Relief, and Economic Security) Act, the USPTO has extended some patent-related deadlines.
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Most people are familiar with blockchain technology because of its use in cryptocurrency, but its use is going to be far more widespread than just as a ledger for digital currency. 
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What is blockchain and how will it affect me?

April 11, 2018 | Blog | By Lisa Adams

The term “blockchain” is everywhere, and it is likely that you will interact with blockchain technology every day in the years to come.
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If you purchased anything from a website using a one-click purchase button, you indirectly paid Amazon for that ability, at least up until September 11, 2017 when Amazon’s patent to this technology expired. As a result, one-click purchasing might become the new norm.
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The U.S. Patent and Trademark Office (USPTO) has launched a new Automated Interview Request (AIR) Form that allows practitioners to submit an online request for an interview with an examiner.  The online form allows applicants to request an interview at any time without calling the examiner over the phone and leaving a message, which is a common practice now.
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The latest trend in patent examiner prior art searches is pushing examiners to use the Scientific and Technical Information Center (STIC) Program to use more foreign patents and foreign non-patent literature during patent prosecution.
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Beware of the USPTO’s Push for Clarity

January 24, 2017 | Blog | By Lisa Adams

The Clarity of the Record Pilot program is an ongoing and evolving program that is part of an attempt by the U.S. Patent and Trademark Office (USPTO) to produce high-quality patents as part of the Enhanced Patent Quality Initiative (EPQI).
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George Bailey stands on a bridge begging for another chance at life. Upon being granted a second chance, he joyously runs home to embrace his family. As the community of Bedford Falls rallies around him and raises funds to save the endangered Building and Loan and George Bailey personally from an unjustified failure, someone proclaims a toast to George Bailey, “the richest man in town.”
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PART III:  First, the JOBS Act requires the SEC to issue complex implementing rules prior to crowdfunding becoming a reality.  For any startup seeking funding through a crowdfunding source, the rules proposed by the SEC under the Act demand detailed disclosures regarding the company. The company must also describe exactly how the securities it is offering are being valued.
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News & Press

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Mintz is pleased to announce that 32 attorneys have been named Massachusetts Super Lawyers and 27 attorneys have been named Massachusetts Rising Stars for 2023.
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Mintz is pleased to share that Member Lisa Adams has been named to the 2023 Top Women of Law list by Massachusetts Lawyers Weekly.
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Mintz members Lisa Adams and Marguerite McConihe contributed to Super Lawyers article titled, “How Do You Protect Intellectual Property in a Business Transaction?” The article helps give insight into the process of protecting your company's IP in a business transaction, including due diligence and getting legal help.
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Mintz is pleased to announce that 120 firm attorneys have been recognized as leaders by Best Lawyers® in the 2024 edition of The Best Lawyers in America©.
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BOSTON, MA – In the 2023 edition of 'IP Stars,' published by Managing Intellectual Property (Managing IP), Mintz achieved recognition in two nationwide categories and received acknowledgment for the exceptional performance of nine of its attorneys.
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BOSTON– Mintz’s award-winning Intellectual Property (IP) Practice again earned national recognition in the 2023 edition of IAM Patent 1000 – The World’s Leading Patent Practitioners. The guide recognized Mintz with three firm-wide rankings and 10 attorneys received a total of 11 individual recommendations.
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BOSTON –Mintz announced today that 39 of its practices and 81 of its attorneys earned recognition in the 2023 edition of Chambers USA, a guide to the country’s leading law firms.
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35 Mintz attorneys have been named Massachusetts Super Lawyers and 25 Mintz attorneys have been named Massachusetts Rising Stars for 2022.
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Mintz Member Lisa Adams and Associate Marguerite McConihe were quoted in an article published by Super Lawyers on legal considerations for business transactions in Massachusetts that involve the transfer of intellectual property assets.
Fifty-one attorneys from Mintz have been named Massachusetts Super Lawyers for 2017 and thirty have been named Massachusetts Rising Stars.
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Best Lawyers named 85 Mintz attorneys to its 2018 list of The Best Lawyers in America. In addition, Mintz attorneys Matthew J. Gardella and Samuel M. Tony Starr were named “Lawyer of the Year” in their respective practice areas.
Fifty-three Mintz attorneys have been named Massachusetts Super Lawyers for 2016 and thirty-one have been named Massachusetts Rising Stars. The findings will be published in the November 2016 issue of Boston Magazine and in a stand-alone magazine, New England Super Lawyers. 
Best Lawyers named 73 Mintz attorneys to its 2017 list of The Best Lawyers in America. Mintz attorneys selected for inclusion in this year’s list span 44 practice areas. 
Lisa Adams, a Member in Mintz’s Intellectual Property Practice, authored this Inside Counsel column discussing how patent examiner training could be altered to allow for greater understanding of company technologies.
Lisa Adams, Member of the Intellectual Property practice at Mintz, participated in the American Intellectual Property Law Association and the U.S. Patent and Trademark Office’s TC 3600 and 3700 Customer Partnership Meeting.
Lisa Adams, a Member in Mintz’s Intellectual Property Practice, authored a Law360 article on the U.S. Patent and Trademark Office’s announcement to launch a new Post-Prosecution Pilot program aimed at enhancing collaboration between patent examiners and applicants.
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Events & Speaking

Moderator
Speaker
Sep
11
2019

MedTech IGNITE IP Primer - Part 2

MassMEDIC

Mintz, One Financial Center, Boston, MA

Speaker
Jul
30
2019

MedTech IGNITE IP Primer

MassMEDIC

Mintz, One Financial Center, Boston, MA

Speaker
Apr
30
2019

Technology Centers 3600 and 3700 Customer Partnership Meeting

USPTO and American Intellectual Property Law Association

USPTO Headquarters, 600 Dulany Street, Alexandria, VA

Moderator
May
1
2018

Technology Centers 3600 & 3700 Customer Partnership Meeting

USPTO and American Intellectual Property Law Association

USPTO Headquarters 600 Dulany Street, Madison Auditorium Alexandria , VA

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Lisa is an esteemed intellectual property attorney whose practice encompasses all areas of intellectual property. She advises clients on a wide range of IP matters including strategic patent portfolio development, clearance to market analyses, acquisitions, diligence, and post-grant proceedings at the US Patent and Trademark Office. Start-ups to Fortune 500 companies in the medical technology, life sciences, energy and sustainability, manufacturing, and technology sectors rely on her counsel. She is known as a skilled strategist who becomes deeply familiar with her clients’ businesses and goals.

Recognition & Awards

  • Recognized in Chambers USA: Massachusetts – Intellectual Property (2021 – 2023)

  • Managing Intellectual Property: Patent Star - Massachusetts (2014 – 2023)

  • IAM Patent 1000 "World's Leading Patent Practitioners" (2021 – 2023)

  • Best Lawyers in America: Patent Law (2016 – 2024); Trademark Law (2016 – 2024)

  • Included on the Massachusetts Super Lawyers list (2014 – 2023)

  • Named to Top Women of Law list by Massachusetts Lawyers Weekly (2023)

  • Included on the Massachusetts Super Lawyers: Rising Star list (2005 – 2008, 2010 – 2013)

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Lisa is an esteemed intellectual property attorney whose practice encompasses all areas of intellectual property. She advises clients on a wide range of IP matters including strategic patent portfolio development, clearance to market analyses, acquisitions, diligence, and post-grant proceedings at the US Patent and Trademark Office. Start-ups to Fortune 500 companies in the medical technology, life sciences, energy and sustainability, manufacturing, and technology sectors rely on her counsel. She is known as a skilled strategist who becomes deeply familiar with her clients’ businesses and goals.

Involvement

  • Board of Directors, Massachusetts Medical Device Industry Council (MassMEDIC)
  • Vice Chair, Mechanical Engineering Sub-Committee of the Patent Law Committee of the AIPLA
  • Planning Committee, AIPLA Mid-Winter Institute
  • Co-chair, Medical Devices Committee of Boston Patent Law Association
  • Past President, Boston Patent Law Association (2010)
  • Past Vice Chair, United Way: Women’s Initiative Education Branch
  • Member, Volunteer Lawyers for the Arts of Massachusetts
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