John C. Paul

Partner

John Paul has over 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. He chairs the firm’s IP management section.

Mr. Paul has set up and directed licensing and enforcement programs that generated significant royalty revenue for leading technology companies. He has analyzed numerous patent portfolios for a wide range of companies and provided strategy on building portfolios and exploiting patents to help those companies understand the legal and commercial significance of IP portfolios and develop more robust portfolios aligned with their business objectives. He has also counseled clients in a wide variety of transactions and conducted numerous due diligence investigations to identify, evaluate, and protect proprietary technology positions during startup, financing, product development, licensing, cooperative ventures, divestitures, and acquisitions. The technologies and industries involved in his work include multimedia electronics, aerospace, medical devices, and consumer products.

Mr. Paul serves as a trustee and vice president of the Licensing Executives Society U.S.A. and Canada. He frequently lectures on patent law, licensing, and IP management, and writes weekly articles for the LES Insights newsletter feature column on recent U.S. cases affecting licensing.

Highlights

• Led U.S. legal team for top multi-national patent management company with over 1000 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 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.
• Examined patents at the U.S. Patent and Trademark Office, 1980-1981.
• Certified Licensing Professional (CLP).

Professional Recognition

• Listed in Intellectual Asset Management (IAM) Magazine as one of 250 leading IP strategists, 2009 and 2011; and as one of 250 of the world's leading patent and technology licensing practitioners, 2010-2011, distinguished as "highly recommended" for licensing in 2011.

Professional Activities

• Licensing Executives Society U.S.A. and Canada (vice president 2006-present; trustee 2005-present; chairman, Washington Chapter, 1994-2004; chairman and member of various committees, 1991-present)
• Licensing Executives Society International (chairman, Engineering Transportation and Physical Sciences Committee, 2009-2010; international delegate, co-chairman Americas Committee, 2005-2009)
• 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)

Select Publications

• Coauthor. "Difficulty Collecting Judgment from Foreign Defendant May Be Sufficient to Establish Irreparable Harm Needed for Preliminary Injunction," LES Insights, March 12, 2012.
• Coauthor. "Hypothetical License Fee for Copyright Infringement Damages Must Be Based on Objective Benchmark Evidence," LES Insights, March 5, 2012.
• Coauthor. "Court Enjoins Infringing Drug Seller Despite Previously Denying a Preliminary Injunction and Payments by Patent Owner to its Exclusive Licensee to Offset Harm of a Generic Drug Entering the Market," LES Insights, Feb. 27, 2012.
• Coauthor. "Provision of the America Invents Act Retroactively Removing Private Standing for False Marking Suits Does Not Violate Due Process of Fifth Amendment," LES Insights, Feb. 20, 2012.
• Coauthor. "Licensee Estoppel Precludes a Trademark Licensee from Challenging the Validity of the Licensed Trademark but Does Not Preclude an Affiliated Entity from Such a Challenge," LES Insights, Feb. 13, 2012.
• Coauthor. "District Court Finds Willful Infringement Does Not Necessarily Warrant Full Enhancement of Treble Damages," LES Insights, Feb. 6, 2012.
• Coauthor. "Patent Exhaustion Does Not Bar Claims Against Later Generations of Self-Replicating Technology," LES Insights, Jan. 30, 2012.
• Coauthor. "The ITC May Look to Conduct Occurring Outside the United States When Investigating "Unfair Methods of Competition and Unfair Acts" Related to Importation," LES Insights, Jan. 23, 2012.
• Coauthor. "Court Doubles On-Going Royalty Rate Based on Finding of Willful Infringement," LES Insights, Jan. 17, 2012.
• Coauthor. "Patent Owner Need Not Produce License Agreements in Litigation Relating to Patents Other than the Patent-in-Suit When Relevant Licenses Under the Patent-in-Suit Exist," LES Insights, Jan. 9, 2012.