Patent Transactions and Strategic Counseling
Develop your strategy. Realize your rewards.
In today’s fast-moving global market, innovations in technology and science afford companies of all sizes a competitive advantage. But innovation itself is not enough. Managing the underlying intellectual property becomes a critical part of business strategy. In fact, the IP strategy of a business can determine how products are developed, whether new markets are entered, and, in some cases, whether an enterprise even succeeds.
Survey the landscape. Identify opportunities.
Innovative start-ups, multinational corporations, and other IP-driven organizations turn to Finnegan for guidance when considering their IP options. We work with each client’s business, legal, and technical staffs to develop IP portfolios that align with their business objectives. 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 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.
Due diligence. Assess risks. Move forward with confidence.
In fast-moving, high-pressure mergers, acquisitions, partnering, and investment transactions, obtaining an accurate and comprehensive intellectual property evaluation is critical. The possible outcome of pending or potential litigation, the assignability of a company’s IP agreements, and the scope and ownership of IP rights are just some of the issues to consider.
Our deep understanding of varied technologies and mastery of IP law allow us to help companies react quickly to any issue that emerges during an IP transaction, to provide thoughtful and accurate answers to investors’ questions, and to craft contract terms that properly allocate risks. We deliver highly targeted and sophisticated analyses of the IP assets at issue that can help drive an equitable deal.
We have conducted successful due diligence on matters as complex as the Exxon–Mobil merger, and as focused as an analysis of in-license agreements of an innovative biotech start-up that was being considered for later-round funding. Our size, technical background, and experience allow us to assemble and mobilize a well-matched team that quickly identifies key issues, proposes options for mitigating risks, and outlines a strategy for strengthening our client’s bargaining position. Ideally, due diligence investigations are conducted at the onset of negotiations, allowing time for a reasoned analysis of the value of the IP portfolio and time for corrective action to address issues that may influence the deal.
Mine and map your portfolio
Unlocking and understanding your assets in a larger context can reveal your position in the market and expose roadblocks to maneuver around and opportunities for moving forward with confidence.
We utilize our technical skills to search prior art, literature, and relevant patents around the globe. Our mapping techniques enable us to outline the applicable information in a highly accessible and easily understood format. But there is no substitute for knowledge and experience when interpreting the data and how it can be used to shape your IP business strategy within the context of the market. We help you understand the strength and breadth of your patents and whether obstacles are something to challenge or to design around. When you are facing a bet-the-company decision, this insight is vital to your success.
Evaluate your IP assets through opinions and counseling
We render hundreds of opinions a year ranging from a single opinion on a specific patent to providing long-term, ongoing counseling on complex patent portfolios or litigation. We routinely address patent validity, enforceability, misuse, design-around issues, licensing potential, IP contract construction and enforcement, and export controls. We regularly partner with our clients’ legal, business, and technical staffs to identify the potential for risk and reward, from idea to revenue-generating portfolios.
In addition to transactional counseling, we routinely advise clients on prelitigation strategies. Our extensive litigation experience gives us firsthand insight into the various types of arguments opponents may raise. Combining our litigation and IP transactional experience allows us to help guide our clients to favorable settlements of disputes before or during litigation.
Generate value through licensing, pooling, and other transactions
Leveraging patents, trade secrets, or portions of an IP portfolio can often generate revenue streams, open new markets, or shut down competitors. We have advised leading corporations and other innovative companies in virtually every type of IP-related transaction. We have helped clients set up and run licensing programs that have generated significant revenue streams, and we have worked with clients to pool patents and deal with standards issues. Our legal and technical experience and our background in the business of exploiting technology and IP assets bring our clients a strategic advantage. IP transactions, often global in nature, require a business-savvy partner with legal and technical expertise.
Transactions may be simple licenses for income or complex strategic alliances providing product and market access to both parties. We can analyze the potential for generating royalty income from existing IP rights, then formulate and execute licensing programs to help you realize full revenue potential. We advise on everything in a transaction program, from the initial confidential evaluation agreement through management of the portfolio of executed IP agreements. As business relationships evolve, we assist in enforcing or amending obligations in those agreements.
Finnegan is a pioneer in the development of IP licensing. Our lawyers have played an instrumental role in the establishment and ongoing management of the Licensing Executives Society (LES), and continue to serve in leadership roles in LES (USA and Canada) and LESI (International). We are recognized authorities in IP transactions law and serve as adjunct professors and contributing authors to licensing and transactional publications.
Export control and regulatory guidance
Developing an international patent strategy requires careful navigation of shifting regulatory and administrative requirements of trade and export controls. The reach is broad, affecting U.S. companies or organizations that export materials, software, and technologies, as well as non-U.S. companies that may utilize such exports in products of their own. In the current global environment, the trend is toward aggressive enforcement, and the penalties are severe. Playing by the rules is essential. A failure to understand the nuances could mean losing access to key markets and the potential of fines and prosecutions through inadvertent violation of export regulations.
Finnegan brings highly focused experience in this specialized area. With our extensive resources, we are well positioned to guide you through the complex maze of U.S. regulations governing the export of materials, software, or technology and even the transfer of knowledge. We regularly advise clients on export regulations, provide opinions on classifications, apply for licenses or license exceptions, and, should the need arise, litigate enforcement actions.
Innovative companies recognize the opportunities the U.S. government provides to reach new markets and increase revenue. But this collaboration is often characterized by unique legal nuances and complexities when it comes to protecting your IP. For example, your proprietary information might be inadvertently released through the Freedom of Information Act. To protect yourself, you need a firm with experience, a firm that knows the current law as well as its evolution, and that understands where red tape may stall progress. Finnegan has represented and worked with many federal agencies and departments—including virtually every federal research funding agency.
As research and development expenditures soar, public–private research has become an increasingly attractive vehicle for funding innovative research. Finnegan can help protect your interests as you obtain grants or work with national laboratories and funding agencies to research innovative solutions.
The guidance you need to meet business objectives
Finnegan has the experience and resources to help your business succeed:
- Strategic portfolio management
- Due diligence
- Patent mining and mapping
- Opinions and counseling
- IP transactions
- Business and technical collaborations
- Licensing programs
- Negotiating and drafting agreements
- Patent pooling and standards
- Export control
- Government contracts