Bill is an experienced patent and trademark attorney with a particular background in medical technology, polymers and advanced materials, polymer processing technologies, and chemicals.
Bill provides counsel on all phases of patent and trademark law, through development strategy, protection, and exploitation of patent and trademark rights. His clients include start-ups, large companies such as Johnson & Johnson, medical technology manufacturers, and research institutions. According to the editors of IAM Patent 1000, “Geary is a go-to for patent and technology commercialisation for clients such as Janssen Pharmaceuticals, which he supports in its acquisition of technologies from innovative companies.”
In the area of patent rights and litigation, Bill has represented clients in federal district courts and before the International Trade Commission. He also provides opinions on new products before they hit the public market and has served as lead counsel in patent interferences and on matters connected to foreign patent opposition. Bill’s patent experience includes technology areas such as oil drilling equipment, floppy disk liners, jewelry clasps, bioimplantable polymers, injection molding equipment and tooling, and multi-layer technology. Regarding trademark law, Bill has represented clients before state courts in Massachusetts and the Trademark Trial and Appeal Board as well as in federal district courts.
Bill is recognized for his broad experience, having received rankings from Super Lawyers in both the Corporate Counsel Edition and the Business Edition.
Experience
- 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.
- Conducted a broad scope due diligence for a medical device manufacturer as it considered investing in a company operating in the electrical nerve stimulation space. This effort involved understanding the technology and the details of future, to-be-developed products. It was necessary to assess the potential for the company to have freedom to market these future products. In doing so, detailed evaluations of some patents were necessary. Our study also assessed the quality of the patent protection in place at the investee, with the goal of determining the effectiveness of the portfolio to prevent third parties from successfully marketing competing technology. We ultimately advised our client that the target company had clearance to operate and the client made the investment.
- Conducted a freedom to operate assessment for a client which produces a clinical diagnostic product, essentially a lab-on-a-chip which provides for point of care testing for a wide range of infections. Most such tests have to be conducted at a central laboratory, which increases expense and causes a significant wait for results. The company's product allows treatment professionals to carry out testing on-site. We reviewed numerous third-party patents to advise the company that it had freedom to operate.
- Provided strategic guidance to a medical device manufacturer in relation to a new product launch. This involved a detailed evaluation of more than 50 patents, assessing them for invalidity and/or non-infringement, to ensure our client's new product would not be impacted by any of the patents. The company is planning a large surgical tool product launch and this freedom to operate project provided the clearance needed to comfortably go to market.
- Conducted complex due diligence in the course of a significant planned acquisition for an orthopedics client assessing the value of the target company from an intellectual property perspective. This included a freedom-to-operate assessment of more than 300 third party patents, and evaluation of the target company’s portfolio to determine the extent to which it provided sufficient protection to prevent competitors from marketing products that can effectively compete with the proposed next generation of products.
viewpoints
Protecting Your Investment
January 15, 2020 | Video | By William Geary
10 Millionth U.S. Patent Issues Today
June 19, 2018 | Blog | By William Geary
Fast Track Examination in the U.S. Patent and Trademark Office
April 19, 2017 | Blog | By William Geary
Preparing Your Portfolio For Prime Time: IP Due Diligence
March 23, 2016 | Article | By William Geary
Med Tech and Biotech Entrepreneurs - $100k Challenge is OPEN for 5 More Days!
February 2, 2016 | Blog | By William Geary
When Prior Terminal Disclaimers Continue to Punish Subsequent Applications: A Potential Danger in Filing an Overly-Broad Terminal Disclaimer
December 10, 2015 | Blog | By William Geary
News & Press
Mintz is pleased to announce that 31 attorneys have been named Massachusetts Super Lawyers and 35 attorneys have been named Massachusetts Rising Stars for 2024.
The Best Lawyers in America 2025 Recognizes 184 Mintz Attorneys across 56 Practice Areas
August 15, 2024
187 Mintz attorneys have been recognized by Best Lawyers® in the 2025 edition of The Best Lawyers in America©. Notably, three Mintz attorneys received 2025 “Lawyer of the Year” awards, and 64 firm attorneys were included in the 2025 edition of Best Lawyers: Ones to Watch.
Mintz IP Practice Recognized in 2024 IAM Patent 1000
June 18, 2024
Our Intellectual Property Practice earned national recognition in the 2024 edition of IAM Patent 1000 – The World’s Leading Patent Practitioners. The guide recognized Mintz with four firm-wide rankings and 14 individual attorney recommendations, including a gold ranking for Intellectual Property Chair Michael Renaud.
Mintz announced today that 42 of its practices and 83 of its attorneys earned recognition in the 2024 edition of Chambers USA, a guide to the country’s leading law firms. Of those included in the guide, 18 attorneys and seven practice areas were awarded Chambers’ highest ranking, Band 1. The firm obtained new listings in three practice areas and 10 of its lawyers were recognized for the first time.
Fifty-Nine Attorneys Recognized as 2023 Massachusetts Super Lawyers and Rising Stars
October 12, 2023
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.
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©.
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.
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.
35 Mintz attorneys have been named Massachusetts Super Lawyers and 25 Mintz attorneys have been named Massachusetts Rising Stars for 2022.
Best Lawyers® recognized 108 firm attorneys in the 2023 edition of The Best Lawyers in America©. Notably, two Mintz attorneys – Poonam Patidar and Scott M. Stanton – received 2023 “Lawyer of the Year” awards, and 28 firm attorneys were included in the inaugural edition of Best Lawyers: Ones to Watch.
Mintz Recognized by Chambers USA 2019
April 26, 2019
Chambers USA 2018 Ranks Mintz Attorneys & Practices
May 03, 2018
Eighty-Four Mintz Attorneys Named 2016 Massachusetts Super Lawyers and Rising Stars
October 18, 2016
Events & Speaking
BIPLA International & Medical Devices Event: Global Strategic Considerations for Medical Device Portfolios
Boston, Massachusetts
IP Strategy and Management Conference
Suffolk University Law School
Suffolk University Law School, 120 Tremont Street, Boston, MA
2015 M2D2 New Venture Competition Awards
The Massachusetts Medical Device Development Center (M2D2)
One Financial Center, Boston, MA
Tips on Swimming with the Sharks: IP Due Diligence
Massachusetts Medical Device Development Center (M2D2)
600 Suffolk Street, 2nd Floor Lowell, MA
Recognition & Awards
Managing Intellectual Property: Patent star - Massachusetts (2014 – 2024)
Chambers USA: Massachusetts – Intellectual Property (2016 – 2019, 2024)
IAM Patent 1000 "World's Leading Patent Practitioners" (2020 – 2024)
Best Lawyers in America: Patent Law (2018 – 2025); Trademark Law (2018 – 2025)
Included on the Massachusetts Super Lawyers list (2004 – 2023)
Involvement
- Member, Boston Intellectual Property Law Association
- Member, American Intellectual Property Law Association (AIPLA)
- Member, American Bar Association
- Member, Boston Bar Association
- Advisory Board, The Massachusetts Medical Device Development Center (M2D2)
Recent Insights
Mintz is pleased to announce that 31 attorneys have been named Massachusetts Super Lawyers and 35 attorneys have been named Massachusetts Rising Stars for 2024.
187 Mintz attorneys have been recognized by Best Lawyers® in the 2025 edition of The Best Lawyers in America©. Notably, three Mintz attorneys received 2025 “Lawyer of the Year” awards, and 64 firm attorneys were included in the 2025 edition of Best Lawyers: Ones to Watch.
