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Patent Licensing Programs

A European company asked us to conduct IP due diligence on a technology it was looking to acquire. The renewable energy focused on the production of photovoltaic cells. In less than one month, we coordinated prior art searches in Europe and the United States, evaluated the search results containing over 500 U.S. and European patents, provided our opinion on freedom to operate with the target technology, and set up a system to monitor European and U.S. patents that may be granted in the future.
When a leading patent management company wanted to generate royalties from patents developed and owned by an international group of research and operating companies, it turned to Finnegan for assistance in setting up and running a licensing and enforcement program involving a full range of activities—analyzing the patents, identifying infringers in the marketplace, negotiating and drafting license agreements, litigating to enforce the patents, and providing strategic advice throughout the process.
We assisted our client in developing and negotiating an arrangement for pooling essential patents for an adopted standard. We created contracts by which the client became the agent for the patent owners in granting licenses to all applicants on a RAND basis.
Finnegan’s work for Eastman Chemical covers a wide variety of technologies, including Eastman’s valuable specialty polyester resin portfolio. Our work has involved drafting and prosecuting applications for commercially important technologies; specialty prosecution proceedings, such as reexaminations and reissues; the preparation of opinions; prelitigation investigations; and issues involving licensing.
A startup company providing the technology for LCD panels faced a difficult licensing challenge in the worldwide fragmented production environment. We assisted the client in formulating a licensing program that provided necessary rights to the various levels of value production in countries around the world while avoiding exhaustion of the client’s IP rights through unrestricted distribution of components.
Our client had the technology and the IP but not the market presence. A major pharmaceutical company needed a portfolio of diagnostic products. We assisted our client in a lengthy negotiation over a partnership arrangement that allowed both companies to prosper. While IP was an important part of the transaction, we assisted in creating contractual protection of the client’s business interests, particularly in the event of a separation.
Since 2000, Finnegan has worked closely with the inventors and legal staff at Caterpillar Inc. The firm has prepared and is prosecuting several hundred patent applications in the United States and in many foreign countries. We have also assisted Caterpillar with many opinion matters involving issues of patent validity, infringement, government contracts, licensing, and copyrights. And we have a significant role protecting Caterpillar's well-known trademarks around the world.