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Finnegan
John C. Paul
Partner
More
vCard
  • 901 New York Avenue, NW
  • Washington, DC 20001-4413
+1 202 408 4109
john.paul@finnegan.com john.paul@finnegan.com

John C. Paul

Partner

  • +1 202 408 4109 +1 202 408 4109
  • john.paul@finnegan.com john.paul@finnegan.com
  • 901 New York Avenue, NW
  • Washington, DC 20001-4413
  • vCard

John Paul has more than 30 years of experience in intellectual property licensing, litigation, and prosecution, with a particular focus on strategic planning, IP portfolio evaluation and development, complex transactions, due diligence investigations, and licensing and enforcement of IP portfolios to generate revenue. He is designated as a Certified Licensing Professional (CLP).John is the immediate past-president of the Licensing Executives Society International (LESI).

John analyzes patent portfolios for a wide range of companies and industries, including multimedia electronics, aerospace, medical devices, and consumer products. He develops strategies and creates systems to help companies understand and effectively communicate the legal and commercial significance of IP portfolios, develop more robust portfolios aligned with their business objectives, generate revenue by monetizing those portfolios, and enter into collaboration agreements. He has set up and directed licensing and enforcement programs that have generated significant royalty revenue for leading technology companies; set up and conducted multiple-round private auctions to sell patent portfolios; led negotiations related to IP issues in business divestitures and other complex transactions; conducted IP due diligence and negotiations for strategic acquisitions of patent portfolios; negotiated and drafted a wide range of agreements relating to the development and use of intellectual property; and litigated a wide range of IP issues relating to infringement and breach of agreements.

John has served as a board member, as president, and as treasurer of LESI. In addition, he previously served as counsel to the board, trustee, and vice president of the Licensing Executives Society U.S.A. and Canada. A frequent lecturer on patent law, licensing, and IP management, John also writes articles for the Global Licensing Report on U.S. cases affecting licensing and other transactions. He previously taught patent law as a member of the adjunct faculty of the Catholic University of America law School. John's community activities include coordinating Finnegan's implementation and management of pro bono lawyer referral service for Washington Area Lawyers for the Arts (WALA).

John has been recognized by Intellectual Asset Management (IAM) magazine as one of 250 leading IP strategists; as one of 250 of the world's leading patent and technology licensing practitioners; and for patent transactions in the D.C. area. Managing Intellectual Property named him an "IP Star"in Washington, D.C. and The Legal 500 U.S. listed him as one of the leading lawyers in patent licensing and transactional work.

Insights

Conference

2023 LES Annual Conference 2023 LES Annual Conference

October 15-18, 2023

Chicago

Articles

Confidentiality Agreements May Be Enforced Against Employees Based on Continued Employment Even if There Is No New Additional Consideration

Confidentiality Agreements May Be Enforced Against Employees Based on Continued Employment Even if There Is No New Additional Consideration Confidentiality Agreements May Be Enforced Against Employees Based on Continued Employment Even if There Is No New Additional Consideration

July 27, 2023

LES Insights

Articles

An Implied Copyright License Requires a “Meeting of the Minds” on how the Copyright is to be Used – Permission to a Television Host to Wear a Clothing Design Did Not Imply a License to a Toy Company to use the Design on Toy Figurines

An Implied Copyright License Requires a “Meeting of the Minds” on how the Copyright is to be Used – Permission to a Television Host to Wear a Clothing Design Did Not Imply a License to a Toy Company to use the Design on Toy Figurines An Implied Copyright License Requires a “Meeting of the Minds” on how the Copyright is to be Used – Permission to a Television Host to Wear a Clothing Design Did Not Imply a License to a Toy Company to use the Design on Toy Figurines

July 20, 2023

LES Insights

Articles

A Patent Owner Lost its Standing to Sue for Patent Infringement Litigation When it Transferred All Substantial Rights in the Patent to Another Entity

A Patent Owner Lost its Standing to Sue for Patent Infringement Litigation When it Transferred All Substantial Rights in the Patent to Another Entity A Patent Owner Lost its Standing to Sue for Patent Infringement Litigation When it Transferred All Substantial Rights in the Patent to Another Entity

November 21, 2022

LES Insights

Articles

Hiring a Former Executive of a Competitor May Result in Liability for Tortiously Interfering with the Non-Compete Provisions of that Executive’s Employment Contract

Hiring a Former Executive of a Competitor May Result in Liability for Tortiously Interfering with the Non-Compete Provisions of that Executive’s Employment Contract Hiring a Former Executive of a Competitor May Result in Liability for Tortiously Interfering with the Non-Compete Provisions of that Executive’s Employment Contract

November 21, 2022

LES Insights

Articles

A Non-Exclusive Trademark Licensee Needs an Explicit Right To Sue for Trademark Infringement

A Non-Exclusive Trademark Licensee Needs an Explicit Right To Sue for Trademark Infringement A Non-Exclusive Trademark Licensee Needs an Explicit Right To Sue for Trademark Infringement

September 26, 2022

LES Insights
More

Professional Recognition

"Paul is an expert in finding the commercial value of portfolios. He is also the former president of the Licensing Executives Society International."

Intellectual Asset Management Patent 1000

“Companies doing deals and embarking on exciting collaborations also find advanced professionals to rely on: recommended alongside Kacedon on the transactions table are licensing mavens John Paul and William Pratt.”

Intellectual Asset Management Patent 1000

“Licensing Executives Society board member Paul is seen by his clients as ‘a core team member.’”

Intellectual Asset Management Patent 1000

“‘John’s curiosity, knowledge and deep experience make him indispensable to strategic discussions, and his insight into IP design and architecture is vital in business model planning.’”

Intellectual Asset Management Patent 1000

“‘When I think of John Paul, I think of a core member of my team,’ a client says about the firm’s IP licensing leader, adding ‘he has the curiosity and the vision to ask penetrating questions about a company's business strategy.’”

Managing Intellectual Property’s IP Stars

“A board member of the Licensing Executives Society International, Paul is another top licensing authority.”

Intellectual Asset Management Patent 1000

“He [Brian Kacedon], John Paul and William Pratt form a strong backbone to the transactional practice.”

Intellectual Asset Management Patent 1000

"Paul is an expert in finding the commercial value of portfolios. He is also the former president of the Licensing Executives Society International."

Intellectual Asset Management Patent 1000

“Companies doing deals and embarking on exciting collaborations also find advanced professionals to rely on: recommended alongside Kacedon on the transactions table are licensing mavens John Paul and William Pratt.”

Intellectual Asset Management Patent 1000

“Licensing Executives Society board member Paul is seen by his clients as ‘a core team member.’”

Intellectual Asset Management Patent 1000

“‘John’s curiosity, knowledge and deep experience make him indispensable to strategic discussions, and his insight into IP design and architecture is vital in business model planning.’”

Intellectual Asset Management Patent 1000

“‘When I think of John Paul, I think of a core member of my team,’ a client says about the firm’s IP licensing leader, adding ‘he has the curiosity and the vision to ask penetrating questions about a company's business strategy.’”

Managing Intellectual Property’s IP Stars

“A board member of the Licensing Executives Society International, Paul is another top licensing authority.”

Intellectual Asset Management Patent 1000

“He [Brian Kacedon], John Paul and William Pratt form a strong backbone to the transactional practice.”

Intellectual Asset Management Patent 1000

News

Award/Ranking

Finnegan Earns Top Rankings in 2026 IAM Patent 1000 Guide; Nearly 60 Attorneys Ranked Finnegan Earns Top Rankings in 2026 IAM Patent 1000 Guide; Nearly 60 Attorneys Ranked

May 28, 2026

Intellectual Asset Management (IAM)

Award/Ranking

50 Finnegan Attorneys Ranked in the 2025 IAM Patent 1000

50 Finnegan Attorneys Ranked in the 2025 IAM Patent 1000

June 2, 2025

Intellectual Asset Management (IAM)

Award/Ranking

Finnegan Remains a Top Tier Firm in the 2025 Managing Intellectual Property IP Stars Rankings

Finnegan Remains a Top Tier Firm in the 2025 Managing Intellectual Property IP Stars Rankings

May 30, 2025

Managing Intellectual Property

Award/Ranking

Finnegan Ranks at the Top of the Managing Intellectual Property IP Stars Rankings Finnegan Ranks at the Top of the Managing Intellectual Property IP Stars Rankings

June 28, 2024

Managing Intellectual Property

Award/Ranking

46 Finnegan Attorneys Ranked in 2024 IAM Patent 1000

46 Finnegan Attorneys Ranked in 2024 IAM Patent 1000

June 6, 2024

Intellectual Asset Management (IAM)

Press Release

Managing Intellectual Property IP Stars: Finnegan Scores Top Patent Rankings Across the Board Managing Intellectual Property IP Stars: Finnegan Scores Top Patent Rankings Across the Board

July 13, 2023

Managing Intellectual Property
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Professional Activities

  • American Society of Mechanical Engineers
    (chairman, Technology and Society Division, 1998-2000; Industry/Laboratory Technology Transfer Committee, 1990-1999)
  • Licensing Executives Society U.S.A. and Canada
    (counsel to the board, 2012-2014; vice president, 2006-2012; trustee, 2005-2012; chairman, Washington Chapter, 1994-2004; chairman and member of various committees, 1991-present)
  • American Intellectual Property Law Association
    (chairman, India Subcommittee, Foreign and International Law Committee, 1994-1995)
  • Washington Area Lawyers for the Arts
    (board of directors, 1997-present)
  • American Society of Mechanical Engineers, Technology and Law Committee
    (chairman, 1998-1999)
  • Licensing Executives Society International
    (chairman, High Technology Committee; immediate past-president, 2022-present; president, 2021-2022; president-elect, 2020-2021; treasurer, 2017-2019; vice president, 2014-2017; member of the board, 2014-present; chairman, High Technology Committee, 2012-2014; chairman, Engineering Transportation and Physical Sciences Committee, 2009-2010; co-chairman Americas Committee, 2005-2009)
Admissions and Education

Admissions

  • U.S. Patent and Trademark Office
  • District of Columbia
  • Ohio
  • Supreme Court of the United States
  • U.S. District Court, District of Columbia
  • U.S. Court of Appeals, Federal Circuit
  • U.S. Court of Appeals, D.C. Circuit

Education

Case Western Reserve Law School
J.D., 1979
Brown University
A.B., Mechanical Engineering, 1976

John's Practices

AI + Finnegan
AI + Patent
AI + Trade Secrets
Global IP Enforcement, Litigation, and Trials
Antitrust and Misuse
Arbitration and Other ADR
Patent Litigation and Trials
Pretrial Strategies
Trade Secrets
Prosecution and Portfolio Management
Appeals to the PTAB
Due Diligence
Ex Parte Reexamination (EPR)
IP Portfolio Management
Licensing, Pooling, and Other Transactions
Opinions and Counseling
Patent Drafting and Prosecution
Patent Mining and Mapping
Patent Reissues
Trade Secrets

John's Industries

AI, Electronics, and Information Technology
Artificial Intelligence (AI) and Machine Learning (ML)
Electrical and Computer Technology
Nanotechnology
Robotics
Chemicals, Industrials, and Materials
Additive Manufacturing
Manufacturing
Textiles
Communications
Financial Services and Business Systems
Internet of Things (IoT)
Media
Consumer Goods and Services
Consumer Products
Energy
Clean Energy and Renewables
Hospitality, Gaming, and Leisure
Sports, Fitness, and Outdoor Recreation
Life Sciences
Digital Health
Medical Device and Diagnostics
Transportation and Logistics
Aerospace, Aviation, and Unmanned Aerial Systems (UAS)
Automotive and Smart Mobility Tech

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