John C. Paul
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 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, 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.
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. Mr. Paul lectures frequently on patent law, licensing, and IP management, and writes weekly articles for LES Insights on 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. "No Laches Defense of 'Unreasonable Delay' for Patent Infringement Suits Brought Within Six-Year Limitation Period," LES Insights, March 28, 2017.
- Coauthor. "Sovereign Immunity May Allow Research Institutions at State Universities to Avoid Patent Validity Challenges at the Patent Office," LES Insights, March 21, 2017.
- Coauthor. "Legal Advice on Patent Strength and Enforceability May Be Shared During Acquisitions and Licensing Negotiations Without Waiving Attorney-Client Privilege," LES Insights, March 14, 2017.
- Coauthor. "Most-Favored-Licensee Provision Did Not Provide a License to Newly-Acquired Patents or Patents that Did Not Trigger the Provision," LES Insights, March 7, 2017.
- Coauthor. "Appeal of PTO Validity Decision Dismissed in Light of Patent Owner's Unilateral Covenant Not to Sue the Appellant," LES Insights, Feb. 28, 2017.
- Coauthor. "Inequitable Conduct Results from Trying to Revive a Lapsed Patent Without Investigating if It Was Intentionally Abandoned," LES Insights, Feb. 14, 2017.
- Coauthor. "Federal Trade Commission Sues Qualcomm for Anticompetitive Licensing Practices in Cell Phone Semiconductor Market," LES Insights, Feb. 7, 2017.
- Coauthor. "PTO Invalidity Decisions Cannot Be Appealed as a Matter of Right: Unsubstantiated Allegations of Injury to Licensing Opportunities Are Insufficient to Confer Standing for Federal Circuit Appeal," LES Insights, Jan. 31, 2017.
- Coauthor. "Willful Infringer Is Not Entitled to a Reasonable Profit from Future Infringing Sales—Ongoing Royalty Rate May Substantially Exceed Past Infringement Royalty Rate," LES Insights, Jan. 17, 2017.
- Coauthor. "Induced Infringement Requires Active Encouragement that Results in Direct Infringement," LES Insights, Jan. 10, 2017.