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. "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," LES Insights, Jan. 17, 2017.
- Coauthor. "Induced Infringement Requires Active Encouragement that Results in Direct Infringement," LES Insights, Jan. 10, 2017.
- Coauthor. "Court Permits Evidence from Damages Expert that Relies on Forward Citation Analysis, Comparable Settlement Agreements, and Preference for Lump Sum Agreements," LES Insights, Jan. 3, 2017.
- Coauthor. "Retroactive Assignment Fails to Bring into Force Earlier Ineffective Assignments and Fails to Cure Break in Chain of Title," LES Insights, Dec. 20, 2016.
- Coauthor. "Design Patent Damages May Be Limited to the Profits Attributable to the Infringing Component of a Product, Rather than the Whole Product," LES Insights, Dec. 13, 2016.
- Coauthor. "Harm to Licensees Does Not Justify Preliminary Injunction to Protect Plaintiff's Licensing Business," LES Insights, Dec. 6, 2016.
- Coauthor. "Court Dismisses Divided Infringement Claim Because Customer's Data Entry Steps Were Not Attributable to the Defendant Software Vendor," LES Insights, Nov. 29, 2016.
- Coauthor. "Infringement Complaint Based Solely on Continued Production of a Previously Licensed Product Fails to Meet Minimum Pleading Standards," LES Insights, Nov. 22, 2016.
- Coauthor. "Willful Patent Infringement May Be Alleged in Suit Filed on the Same Day the Patent Issues Based on Prior Notice of Allowance," LES Insights, Nov. 15, 2016.