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Biography

Elizabeth Shah works collaboratively with companies to generate and execute successful patent strategies that further their business goals. When companies are deciding whether to move forward with investments, patent acquisitions, licenses, or potential development collaborations, she conducts due diligence analyses to inform their decision-making processes. She counsels start-up and established companies on how to tailor their patent filings to protect developing products, to block against competitor design-arounds, and to stage their portfolios for monetization. She also executes these patent-filing strategies and works side-by-side with each client to prosecute patents while monitoring changes to the client’s business trajectory to ensure that their business and patent strategies continue to complement one another. She also investigates the competitive landscape to inform future development strategies, providing patentability, freedom-to-operate, validity, noninfringement, and clearance opinions when needed.

Elizabeth previously worked in-house at three medical device companies. In her capacity as an intellectual property manager, she oversaw a substantial intellectual property portfolio, navigated license agreements, and developed procedures and training programs for capturing and handling intellectual property. She also worked on business development and sales teams, generating product launch strategies. As a result, she understands the many moving parts involved in the successful development and introduction of new technologies, both from an IP-perspective and a logistical business standpoint. Elizabeth draws from this experience when counseling clients and learning about their own technologies and goals.

Highlights

  • Filed one of the first Supplemental Examination requests after the commencement of new U.S. Patent and Trademark Office proceedings and led the subsequent ex parte reexamination.
  • Invited to speak internationally on the topics of licensing and patent portfolio development.
  • Has served as guardian ad litem in multiple custody cases to represent the best interests of the children in her pro bono work.

Bar Admissions

  • District of Columbia
  • Massachusetts
  • U.S. Patent and Trademark Office

Education

  • Georgetown University Law Center, J.D., 2011
  • Tufts University, B.S., Biomedical Engineering & Biology, cum laude, 2007

Publications

  • Author. “Don’t Forget About Design Patents,” BoMc Blog, November 20, 2017.
  • Author. “Changing Patent Strategies as Products Become ‘Smarter’,” BoMc Blog, May 1, 2017.
  • Coauthor. “The Inside Out of IP Due Diligence: How to Successfully Coordinate Between In-House and Outside Counsel,” ABA Landslide Magazine, Sept./Oct. 2016.
  • Coauthor. “The Hidden World of Design Patent Prosecution,” Law360, Dec. 3, 2015.
  • Coauthor. “How Design Patents Strengthen a Medical Device IP Portfolio,” Medical Design Technology, Nov. 13, 2013.
  • Coauthor. “How Crowdfunders Can Leverage IP to Avoid the Fate of Vaporware,” Intellectual Property Today, Nov. 2013.
  • Quoted. “Attorneys, Tech Transfer Pros Offer Their Take on How to Address New Rules Under AIA,” Technology Transfer Tactics, March 2013.
  • Coauthor. “Best Practices for Preserving Patent Eligibility During a Crowdfund Offering,” BNA’s Patent, Trademark & Copyright Journal, Sept. 14, 2012.
  • Coauthor. “How to Protect Your Intellectual Property When Using Crowdfunding,” Corporate Counsel, Sept. 5, 2012.

Organizations

  • American Intellectual Property Law Association (AIPLA), Member
  • American Bar Association (ABA), Member
  • Boston Patent Law Association (BPLA), Member

Speaking Engagements