IP Portfolio Management
About
Survey the landscape. Identify opportunities.
Innovative startups, multinational corporations, and other IP-driven organizations turn to Finnegan for guidance when considering their IP options. We work with our client’s business, legal, marketing, and technical staffs to develop IP portfolios that align with their business objectives. Through our European, UK, and U.S. practices, we assess existing and developing portfolios to ensure that business plans are built on and around products based on strong IP protection that avoid infringement. This work often entails identifying and prioritizing assets with recommendations to license technologies or sell marginal assets to generate revenue, to donate or even abandon assets to reduce costs, and to identify acquisitions to strengthen or expand an existing portfolio.
Contacts
Experience
Finnegan is lead and preferred IP transactions counsel for one of the largest pharmaceutical companies in the world, handling more than 50 diligence projects each year, including all IP and related transactional aspects of the matters. The transactions span the full gamut of technologies from small molecule through biologics such as antibodies, oligonucleotides, and gene therapies. Finnegan also provides extensive assistance with post-deal integration procedures and subsequent global prosecution and portfolio strategy, ensuring a seamless transition of IP assets to the company and maximum value from acquired IP.
Finnegan is lead and preferred IP strategy counsel for one of the largest pharmaceutical companies in the world, handling all aspects of prosecution and portfolio management for multiple top-tier products for the client. The work spans the gamut from drafting and prosecution through larger strategic planning, patent term extension, and pre-litigation preparation on blockbuster small molecule and biologic products in the oncology, rheumatology, immunology, neuromuscular, and cell and gene therapy spaces.
Finnegan represents BrainCo, a developer of brain-machine interface (BMI) wearables that combine electroencephalography (EEG) signal processing with artificial intelligence (AI) and machine learning (ML) to enable users to control electronic devices using brain signals. The firm works with BrainCo to develop and implement its intellectual property strategy, including drafting and prosecuting utility and design patent applications, in support of the company’s efforts to build a robust patent portfolio covering innovations and designs related to BMI technologies used in toys, smart home appliances, and robotic devices.
Guiding a multinational technology company through U.S. Patent and Trademark Office (USPTO) proceedings involving semiconductor manufacturing, image processing, and artificial intelligence (AI) technologies by leveraging advanced drafting and prosecution strategies to align with and support its business goals.
Advised a cycling-focused startup on the preparation and prosecution of a foundational patent application, which played a key role in its acquisition by a global leader in GPS-enabled technology across fitness, outdoor, marine, automotive, and aviation markets.
