Alex is a highly experienced scientist turned patent attorney who drafts and prosecutes patent applications in the fields of medical devices, biotechnology, life sciences, computer systems, electronics, imaging software, control systems, mechanical devices, telecommunications, and clean energy.
He also has experience in trademark opposition and cancellation proceedings, patent litigation, due diligence, and providing invalidity and non-infringement opinions.
For over a decade, Alex has represented major universities, small and medium businesses, and start-ups, learning their business goals and strengthening their positions by developing strong intellectual property strategies. Alex’s patent prosecution work includes semiconductor manufacturing technology, laboratory devices for the pharmaceutical industry, 3-D modeling for surgical planning, computer-controlled prosthetic devices, automatic speech recognition technology, needle-free injection devices, fuel cell technology, drug infusion pumps, wearable sensors, fiber optics, photonic sensors, augmented reality (AR), microfluidics and diagnostics, medical implants, and nanomaterials. Additionally, Alex has worked with artificial intelligence innovations such as neural networks, machine learning, natural language processing, and the Internet of Things. Alex also advises clients on open source software compliance, open source patent issues, and corporate policies on use of open source software.
Alex combines his experience in patent prosecution with his extensive technical background to counsel clients on important business matters and strategies, including:
- portfolio evaluation for potential investors
- patentability opinions
- freedom to operate analyses
- noninfringement and invalidity opinions
- portfolio management
- license agreements
- competitive IP intelligence
- merger and acquisition (M&A) due diligence
Credentials
Bar Admissions
- U.S. District Court, District of Massachusetts
- U.S. Patent and Trademark Office
- Massachusetts
Education
- B.S. in Biomedical Engineering, summa cum laude, Boston University
- M.S. in Biomedical Engineering, Boston University
- Ph.D. in Biomedical Engineering, Boston University
- J.D., Suffolk University Law School
Practice Areas
- Agreements
- Copyrights
- Counseling
- Design Patents
- IP Audits
- IP Diligence
- Licensing
- Open Source Software Counseling
- Patents
- Trademark Opposition & Cancellation Proceedings
- Trademarks
Technologies
- Artificial Intelligence
- Bioinformatics
- Biotechnology & Life Sciences
- Clean Technology
- Computer Software
- Electrical Engineering
- Mechanical Engineering
- Medical Devices
- Medical Imaging
- Mobile
- Optics & Photonics
- Robotics
- Telecommunications
Representative Experience
- Prosecuted a large portfolio of patent applications for a major university in the drug delivery space.
- Prosecuted a significant portfolio of patent applications for an additive manufacturing startup company.
- Developed and expanded a major portfolio of patent applications for a medical implant startup company.
- Conducted due diligence of a medical device patent portfolio for an acquisition by a major private investment company.
- Successfully represented a food manufacturer in a trademark cancellation proceeding.
- Conducted trademark clearance for a public gene therapy company.
Publications
- Rehabilitation Robotics and Prosthetics: Trends and Intellectual Property Considerations , Medical Design Briefs, March 1, 2018
- Intellectual Property: How Medtech Startups Can Protect It, Medical Design & Outsourcing, August 7, 2017
- “Technology Transfer to Combat Climate Change: Opportunities and Obligations Under TRIPS and Kyoto” 9 J. HIGH TECH. L. 1 (2009).
Speaking Engagements
- “Savvy Patenting Strategies for Entrepreneurs,” MDG Online Forum, November 15, 2023
- "Partnerships for Health: Stories from the Diagnostics and Medtech Space," German-American Business Council Event, Moderator, November 8, 2023
- "Startup Funding for Medical and Healthcare Innovations," Medical Development Group of Boston Forum, Moderator, October 12, 2023
- "Medical Device Development: Advancing from Product to Market," presented during the four week hybrid course that examined the current climate for the development of medical devices, Harvard Catalyst, April 1-May 1, 2023
- "Optics and Photonics in Healthcare - Advancing Cross-Functional Solutions for the Present and Future," Medical Development Group Forum, October 27, 2022
- "Patenting Strategies for Entrepreneurs," UMass Lowell Innovation Hub, October 4, 2022
- "TRANSforming Care with Emerging, Novel Devices (TRANSCEND)," presented during the four week hybrid course that explored the current climate for medical device development, Harvard Catalyst, April 1-May 1, 2022
- "Artificial Intelligence in Medicine – Promise Becoming Practice," MDG Online Forum, January 19, 2022
- "Strategic Focus on Innovation Protection and Rights Enforcement," German American Business Council of Boston, May 19, 2021
- "Orthopedic and Sports Rehabilitation - Game Changing Innovations," MDG Online Forum, December 2, 2020
- "Once Upon a Time in …Medical Device and Open Source Land," MIT Enterprise Forum, Webinar, October 14, 2020
- "Software as a Medical Device (SaMD)," MDG Forum, January 8, 2020
- "Bionics and Exoskeletons - Advances in Technology and Current Unmet Needs for Prosthetics," MDG Forum, Weston, MA, January 16, 2019
- "Suffolk University’s Journal of High Technology Law Alumni Panel," Suffolk University Law School, Boston, MA, November 27, 2018
- "Successful Strategies for Medical Device Startups," MDG Forum, Westin, MA, April 4, 2018
- “Strategies and Considerations for Protecting Your Medical Technology Start-Up’s Innovations,” Hamilton Brook Smith Reynolds Lecture, Cambridge, MA, November 29, 2016
- National Institute of Biomedical Imaging and Bioengineering’s Training Grantees Meeting, Bethesda, MD, July 11, 2016
- "Intellectual Property Protection Strategies," Hamilton Brook Smith Reynolds / German-American Business Council of Boston Lecture, Newton, MA, April 6, 2016
Professional Associations
- Boston Intellectual Property Law Association (BIPLA)
- German-American Business Council of Boston - Serving on their Board of Directors
- IEEE Engineering in Medicine and Biology Society
- Medical Development Group of Boston - Participating in Programs Committee
- The New England Section of Optica
Certifications
- Black Duck Certified Open Source Legal Professional