John C. Paul
John Paul has more than 30 years of experience in intellectual property licensing, litigation, and prosecution. He currently focuses on strategic planning, complex transactions, due diligence investigations, and licensing and enforcement of IP portfolios to generate revenue. He leads the firm's IP management and transaction section, and is designated as a Certified Licensing Professional (CLP).
Mr. Paul 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, and generate revenue by monetizing those portfolios. Licensing and enforcement programs that he has set up and directed have generated significant royalty revenue for leading technology companies. He has also 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; and negotiated and drafted a wide range of agreements relating to the development and use of intellectual property.
Mr. Paul serves as a board member and vice president of the Licensing Executives Society International. He previously served as counsel to the board, trustee, and vice president of the Licensing Executives Society U.S.A. and Canada. He lectures frequently on patent law, licensing, and IP management, and writes weekly articles for LES Insights on recent U.S. cases affecting licensing and other transactions.
- Managed U.S. legal team for top multi-national patent management company with more than 1,000 licensees and significant royalty revenue.
- Led IP due diligence investigations for acquisitions and investments in technology companies in electronics, materials, and life sciences with results that significantly changed the value of the underlying transactions.
- Coordinated defense for an industry group and its members against major patent assertion programs.
- Taught patent law as a member of the adjunct faculty of the Catholic University of America Law School, 1999-2003.
- Coordinated Finnegan's implementation and management of pro bono lawyer referral service for Washington Area Lawyers for the Arts.
- Recognized by Intellectual Asset Management (IAM) magazine as one of 250 leading IP strategists, 2009 and 2011; as one of 250 of the world's leading patent and technology licensing practitioners, 2010, 2011; and as "highly recommended" for patent transactions, 2011-2016.
- Recognized as an "IP Star" in Washington, D.C., by Managing Intellectual Property, 2013-2016.
- Recognized as a Washington, D.C. "Super Lawyer" in Intellectual Property, Super Lawyers published by Thomson Reuters, 2013-2016.
- Recognized by The Legal 500 U.S. as one of the leading lawyers in patent licensing and transactional work, 2012-2014.
- Licensing Executives Society International (vice president and 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; and international delegate)
- 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)
- American Society of Mechanical Engineers (chairman, Technology and Society Division, 1998-2000; chairman, Technology and Law Committee, 1998-1999; Industry/Laboratory Technology Transfer Committee, 1990's)
- Washington Area Lawyers for the Arts (board of directors, 1997-present)
- Serves as an editor of IP Marketplace, Finnegan's monthly update on developments affecting licensing and other IP transactions.
- Coauthor. "Purchaser of Patents Barred from Asserting Patents Against Practicing Entity Led to Believe It Would Not Be Sued by Prior Owner," LES Insights, Aug. 30, 2016.
- Coauthor. "Alleged Omitted Inventor With No Patent Ownership Fails to Adequately Allege Reputational Harm to Sue for Inventorship Correction," LES Insights, Aug. 23, 2016.
- Coauthor. "A Prior Agreement to Outsource Manufacturing Does Not Invalidate a Patent," LES Insights, Aug. 16, 2016.
- Coauthor. "'Most-Favored' Licensee Clause Entitles Paid-Up Licensee to Refund of $69M Amount Exceeding Lump-Sum Payment of Subsequent Licensee," LES Insights, Aug. 9, 2016.
- Coauthor. "Inventor's Employment Agreement Did Not Affect His Freedom to Assign and Assert Patents Broadly Related to His Employment," LES Insights, July 19, 2016.
- Coauthor. "Attorney-Client Communications Can Be Privileged and Protected from Production Even When They Contain Discoverable Facts," LES Insights, June 28, 2016.
- Coauthor. "Exclusive Field of Use Licensee Must Join Patent Owner to Sue for Patent Infringement," LES Insights, June 21, 2016.
- Coauthor. "Court Finds an Agreement Not-to-Sue Is a Patent License Despite Language to the Contrary," LES Insights, June 14, 2016.
- Coauthor. "Patent Eligibility Requires Claims to Specific Improvement of Computer Functionality: Patent Eligibility of Categorical Data Storage Claims Not Saved by Federal Circuit’s Enfish Decision," LES Insights, June 7, 2016.
- Coauthor. "Company Principals Who Act as Litigation Counsel May Be Barred from Reviewing Confidential Information and from Prosecuting Patents," LES Insights, May 31, 2016.