Prosecution and Portfolio Management
About
Your company has conceived a cutting-edge product or a novel way to advance a technique. Before sharing it with the world, even before fully investing in the innovative concept, you owe it to your team and investors to work with intellectual property professionals to understand the protections needed and to develop a strategy for staking your claim in the market. Finnegan professionals have decades of experience in IP law, enabling them to build solid and effective prosecution strategies, from idea to issuance and beyond. And by beyond, we don’t just help you think about individual inventions. We help you design a sophisticated portfolio of coordinated IP that can include a balance of layered patent and trade secret as well as trademark and copyright protections.
Practice Areas
Appeals to the PTAB
The Patent Trial and Appeal Board (PTAB) of the U.S. Patent and Trademark Office has the authority to hear and adjudicate appeals from applicants on adverse patentability decisions in patent applications and patent reissues and reexaminations.
Copyright
To maintain a competitive advantage, companies and organizations need clear guidance in German, UK, and US intellectual property law and creative solutions to protect their copyrighted works.
Design Rights
Your designs separate you from the competition, make your products distinctive, and help preserve your competitive advantage.
IP Portfolio Management
To be viable and competitive, a company’s business plan must include a comprehensive and proactive intellectual property strategy—investors expect it, and the marketplace demands it.
Patent Drafting and Prosecution
To turn your idea into a valuable asset, you need professionals trained to draft and prosecute patent applications strategically, through a litigation lens, and with the clients’ interests and instructions always at the forefront.
Ex Parte Reexamination (EPR)
Reexamination allows anyone to test the validity of a U.S. patent.
Patent Reissues
Applying for a reissue allows patent owners to correct errors in U.S. patents.
Patent Term Extension (PTE) and Supplementary Protection Certificate (SPC)
If your patented innovation will be developed into a product subject to regulatory approval, the patent life can be extended through Patent Term Extension (PTE) or Supplementary Protection Certificate (SPC).
View Patent Term Extension (PTE) and Supplementary Protection Certificate (SPC)
Standard Essential Patents (SEPs)
A Standard Essential Patent (SEP) is an invention that is incorporated into the standard for a certain technology. Handling SEP litigation and license negotiations requires a particular type of experience.
Trade Secrets
Intense competition, employee mobility, and the proliferation of spin-off and startup businesses make the trade secret protection critical.
Trademark Counseling and Prosecution
Counseling during the early phases of trademark development helps avoid costly conflicts or enforcement problems down the road.
Experience
Finnegan is lead and preferred IP transactions counsel for one of the largest pharmaceutical companies in the world, handling more than 50 diligence projects each year, including all IP and related transactional aspects of the matters. The transactions span the full gamut of technologies from small molecule through biologics such as antibodies, oligonucleotides, and gene therapies. Finnegan also provides extensive assistance with post-deal integration procedures and subsequent global prosecution and portfolio strategy, ensuring a seamless transition of IP assets to the company and maximum value from acquired IP.
Finnegan is lead and preferred IP strategy counsel for one of the largest pharmaceutical companies in the world, handling all aspects of prosecution and portfolio management for multiple top-tier products for the client. The work spans the gamut from drafting and prosecution through larger strategic planning, patent term extension, and pre-litigation preparation on blockbuster small molecule and biologic products in the oncology, rheumatology, immunology, neuromuscular, and cell and gene therapy spaces.
IL-2024-000026, UK High Court
Finnegan is proud to partner with CentralSquare in developing and protecting its mission-critical software and technology solutions for public sector agencies, including those serving public safety and public administration. Our team has led the drafting and prosecution of a broad portfolio of artificial intelligence (AI)-related patent applications, advancing CentralSquare’s innovations across emergency services and municipal operations. These AI technologies accelerate emergency response, streamline workflows, and strengthen data-driven decision-making for agencies and the communities they serve.
Working closely with CentralSquare’s inventors and in-house counsel, we ensure every application captures the technical depth of the invention while aligning with CentralSquare’s strategic goals. We prioritize clarity, enforceability, and foresight—refining claims, anticipating examiner challenges, and crafting robust Office Action responses. By anticipating industry trends in AI and preparing forward-looking applications, Finnegan positions CentralSquare’s innovations not only to be protected, but to drive lasting impact in public safety and beyond.
