Experience

Patent Mining and Mapping

About

Mine and map your portfolio

Understanding intellectual property (IP) assets in a larger context, whether your own or that of a competitor or acquisition target, can help reveal market position, identify potential threats or roadblocks to maneuver around, and expose white space and opportunities for moving forward with confidence.

Across our US, European, and UK practices, we utilize our technical skills and relationships with international third-party vendors to search prior art, literature, and relevant patents around the globe. Our IP landscaping and mapping experience enables us to summarize large volumes of information in a highly accessible and easily understood format by legal, technical, and business decision makers. But there is no substitute for human knowledge and experience when interpreting the data points and how they can be used to shape your IP business strategy within the context of the broader market. We help you understand the relative strength and breadth of your patents and whether obstacles or threats are something to challenge or to design around. With this actionable intelligence, opportunities are identified. Whether you are facing a bet-the-company decision or deliberating whether to pursue an acquisition or purchase of IP assets, these insights can greatly increase your level of success.

Contacts

Cory C. Bell: Partner; Boston, MA; +1 617 646 1641; Email

Dr. Antje Brambrink: Partner; Munich; +49 89 83931 1239; Email

Aaron J. Capron: Partner; Palo Alto, CA; +1 650 849 6680; Email

Daniel G. Chung: Partner; Washington, DC; +1 202 408 4355; Email

Darren M. Jiron: Partner; London; +44 (0)20 7864 2853; +1 571 203 2729; Email

Karthik Kumar, Ph.D.: Partner; Washington, DC; +1 202 408 4433; Email

Timothy P. McAnulty: Partner; Washington, DC; +1 202 408 4348; Email

John M. Mulcahy: Partner; Reston, VA; +1 571 203 2751; Email

Eric P. Raciti: Partner; Boston, MA; +1 617 646 1675; Email

Kevin D. Rodkey: Partner; Atlanta, GA; +1 404 653 6484; Email

Cory C. Bell: Partner; Boston, MA; +1 617 646 1641; Email

Dr. Antje Brambrink: Partner; Munich; +49 89 83931 1239; Email

Aaron J. Capron: Partner; Palo Alto, CA; +1 650 849 6680; Email

Daniel G. Chung: Partner; Washington, DC; +1 202 408 4355; Email

Darren M. Jiron: Partner; London; +44 (0)20 7864 2853; +1 571 203 2729; Email

Karthik Kumar, Ph.D.: Partner; Washington, DC; +1 202 408 4433; Email

Timothy P. McAnulty: Partner; Washington, DC; +1 202 408 4348; Email

John M. Mulcahy: Partner; Reston, VA; +1 571 203 2751; Email

Eric P. Raciti: Partner; Boston, MA; +1 617 646 1675; Email

Kevin D. Rodkey: Partner; Atlanta, GA; +1 404 653 6484; Email

Everyone in this practice

Experience

Finnegan was selected to supervise the identification and development of native intellectual property (IP) and the oversight of the licensed IP of numerous academic partners in the U.S. and Europe. As an ongoing exercise, the company’s portfolio is landscaped in the context of the industry for business, legal and research and development (R&D) decisionmakers. Identification of acquisition candidates and targets for both in- and out-licensing is based on current information from these activities. New product development risks are also mitigated by leveraging an up-to-date understanding of competitors’ IP positions.

A European company asked us to conduct intellectual property (IP) due diligence on a technology it was looking to acquire. The renewable energy focused on the production of photovoltaic cells. In less than one month, we coordinated prior art searches in Europe and the U.S., evaluated the search results containing over 500 U.S. and European patents, provided our opinion on freedom to operate with the target technology, and set up a system to monitor European and U.S. patents that may be granted in the future.

Oversaw due diligence for one of the world’s largest chemical companies during the acquisition of another company, including overseeing the mapping and analysis of the target’s patent portfolio and analyzing potential infringement by competitors.

A leading healthcare company that develops wireless communication systems for managing patient care turns to Finnegan for counsel in many different facets of intellectual property (IP). We study the patent landscape for wireless health management and assist the company in weaving its way through patents of its competitors; we obtain patent protection for its technology and trademark protection for its brands; and we provide guidance in drafting agreements for the transfer of technology.

When a leading patent management company wanted to generate royalties from patents developed and owned by an international group of research and operating companies, it turned to Finnegan for assistance in setting up and running a licensing and enforcement program involving a full range of activities—analyzing the patents, identifying infringers in the marketplace, negotiating and drafting license agreements, litigating to enforce the patents, and providing strategic advice throughout the process.

One of our long-standing clients asked us for advice on how to expand its patent portfolio to include nanotechnology. We researched the activities of its competitors, reported our findings, and suggested a course of action to a group of its senior intellectual property (IP) counsel and technical leaders. Our report focused on the implications of nanotechnology in the client’s industry and identified desirable avenues of research and product development where nanotechnology could be implemented and protected to provide an advantage in the marketplace.