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Lisa Adams

Member

[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 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 has a particular focus on medical technology, life sciences, mechanical products and processes, chemical and materials science, electrochemistry, injection molding equipment and tooling, and multi-layer technology.

Lisa represents clients in patentability evaluations, the preparation and prosecution of patent applications and post-grant proceedings. She also conducts freedom to operate studies, performs due diligence and clearance studies, and helps clients build IP portfolios. Named among the Top 250 Women in IP by Managing Intellectual Property, Lisa’s clients include start-ups as well as large companies.

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 also active in pro bono work, serving with the Volunteer Lawyers for the Arts of Massachusetts and the United Way, for which she previously served as the Vice Chair for the Women’s Initiative Education branch.

Education

  • New England Law (JD)
  • Texas State University (BS, Chemistry)

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.

Recognition & Awards

  • Managing Intellectual Property: Patent Star - Massachusetts (2014 – 2018)
  • Best Lawyers in America: Trademark Law (2016 – 2019); Patent Law (2017 – 2019)
  • Included on the Massachusetts Super Lawyers list (2014 – 2017)
  • Included on the Massachusetts Super Lawyers: Rising Star list (2005 – 2008, 2010 – 2013)

Involvement

  • 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

Viewpoints

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. 
The term “blockchain” is everywhere, and it is likely that you will interact with blockchain technology every day in the years to come.
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.
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.
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.
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).
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.”
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.
PART 2: he US government began to address these investment challenges through the Jumpstart Our Business Startups Act (JOBS Act) in April 2012. While companies like Kickstarter allow startups to sell products or services, the JOBS Act envisions companies actually selling equity in themselves through crowdfunding campaigns. 
PART 1: Pebble Technology had an interesting goal.  It wanted to design and build a watch that could connect to iPhone and Android smartphones using Bluetooth. It wanted to allow the watch to alert a wearer with a silent vibration for incoming calls, emails and messages.

News & Press

Fifty-one attorneys from Mintz have been named Massachusetts Super Lawyers for 2017 and thirty have been named Massachusetts Rising Stars.
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.

Events

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

Speaker
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