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M. Paul Barker
+1 650 849 6620
paul.barker@finnegan.com

Stanford Research Park
3300 Hillview Avenue
Palo Alto, CA 94304-1203

+1 650 849 6600
Fax +1 650 849 6666

Bar and Court Admissions

  • California
  • District of Columbia
  • Virginia
  • U.S. Patent and Trademark Office

Education

  • George Washington University Law School
    J.D., with honors, 1986
  • University of Florida
    B.S., Microbiology, 1983

M. Paul Barker

Partner

Paul Barker has a diverse practice, including interferences, post-grant proceedings, patent prosecution, arbitration, opinions, due diligence, and strategic counseling. He focuses in the areas of biotechnology, pharmaceuticals, and diagnostics. In his patent office practice, he prepares patent applications and responses to office actions, represents clients in reexamination and reissue proceedings, and prepares briefs to the appeal board. He has also prepared numerous validity and infringement opinions and represented clients in due diligence investigations in various areas of the biotechnology and pharmaceutical fields. Mr. Barker has presented CLE speeches on developments in the law, including post-grant proceedings, all aspects of the America Invents Act, including first-inventor-to-file provisions, Bilski, KSR, and Ariad.

Earlier in his career, Mr. Barker was involved in patent infringement litigation involving recombinantly made protein and nucleic acid diagnostics. He has broad technical experience, including antibodies, nucleic acid amplification and detection techniques, protein chemistry, gene therapy, pharmaceutical formulations and treatments, and transgenic plants.

Highlights

  • Represented biotechnology, pharmaceutical, and medical device companies in due diligence analyses related to technology in-licensing opportunities and business acquisitions.
  • Managed numerous patent portfolios for clients in diverse technologies, including antibodies, DNA amplification and sequencing techniques, proteins, transgenic animals, and diagnostics.
  • Represented companies in interferences related to immunoassays, proteins, nucleic acids, methods of treatment, and DNA sequencing techniques, machines, and reagents.
  • Negotiated licenses with academic institutions and commercial entities in the areas of proteins, nucleic acids, DNA amplification techniques and reagents.
  • Serving as member of the firm's management committee.

Professional Recognition

  • Recognized as an "IP Star" in California by Managing Intellectual Property, 2016.

Professional Activities

  • District of Columbia Bar
  • Virginia State Bar
  • American Bar Association
  • Licensing Executives Society

Select Publications

  • Coauthor. "IP in Business Transactions: United States," PLC's IP in Business Transactions Multi-Jurisdictional Guide, Jan. 1, 2014.
  • Coauthor. "Patents, Trade Marks, Copyright, and Design in United States," PLC's IP in Business Transactions Multi-Jurisdictional Guide, Jan. 1, 2014.
  • Coauthor. "America Invents Act Effects on Litigation," IP Litigator, May/June 2013.
  • Coauthor. "IP Update: New Act Correcting The America Invents Act," Westlaw Journal Intellectual Property, Feb. 6, 2013.
  • Coauthor. "IP in Business Transactions: United States," PLC's IP in Business Transactions Multi-Jurisdictional Guide, March 1, 2012.
  • Coauthor. "Main IPRs: United States," PLC's IP in Business Transactions Multi-Jurisdictional Guide, March 1, 2012.