Partner
John Paul has more than 30 years of experience in intellectual property licensing, litigation, and prosecution, with a particular focus on strategic planning, IP portfolio evaluation and development, complex transactions, due diligence investigations, and licensing and enforcement of IP portfolios to generate revenue. He is designated as a Certified Licensing Professional (CLP).John is the immediate past-president of the Licensing Executives Society International (LESI).
John analyzes patent portfolios for a wide range of companies and industries, including multimedia electronics, aerospace, medical devices, and consumer products. He develops strategies and creates systems to help companies understand and effectively communicate the legal and commercial significance of IP portfolios, develop more robust portfolios aligned with their business objectives, generate revenue by monetizing those portfolios, and enter into collaboration agreements. He has set up and directed licensing and enforcement programs that have generated significant royalty revenue for leading technology companies; set up and conducted multiple-round private auctions to sell patent portfolios; led negotiations related to IP issues in business divestitures and other complex transactions; conducted IP due diligence and negotiations for strategic acquisitions of patent portfolios; negotiated and drafted a wide range of agreements relating to the development and use of intellectual property; and litigated a wide range of IP issues relating to infringement and breach of agreements.
John has served as a board member, as president, and as treasurer of LESI. In addition, he previously served as counsel to the board, trustee, and vice president of the Licensing Executives Society U.S.A. and Canada. A frequent lecturer on patent law, licensing, and IP management, John also writes articles for the Global Licensing Report on U.S. cases affecting licensing and other transactions. He previously taught patent law as a member of the adjunct faculty of the Catholic University of America law School. John's community activities include coordinating Finnegan's implementation and management of pro bono lawyer referral service for Washington Area Lawyers for the Arts (WALA).
John has been recognized by Intellectual Asset Management (IAM) magazine as one of 250 leading IP strategists; as one of 250 of the world's leading patent and technology licensing practitioners; and for patent transactions in the D.C. area. Managing Intellectual Property named him an "IP Star"in Washington, D.C. and The Legal 500 U.S. listed him as one of the leading lawyers in patent licensing and transactional work.
Articles
A Patent Owner Lost its Standing to Sue for Patent Infringement Litigation When it Transferred All Substantial Rights in the Patent to Another Entity A Patent Owner Lost its Standing to Sue for Patent Infringement Litigation When it Transferred All Substantial Rights in the Patent to Another Entity
November 21, 2022
LES InsightsArticles
Hiring a Former Executive of a Competitor May Result in Liability for Tortiously Interfering with the Non-Compete Provisions of that Executive’s Employment Contract Hiring a Former Executive of a Competitor May Result in Liability for Tortiously Interfering with the Non-Compete Provisions of that Executive’s Employment Contract
November 21, 2022
LES InsightsArticles
A Non-Exclusive Trademark Licensee Needs an Explicit Right To Sue for Trademark Infringement A Non-Exclusive Trademark Licensee Needs an Explicit Right To Sue for Trademark Infringement
September 26, 2022
LES InsightsArticles
Federal Court Rejects Massachusetts’s Statute On Out-of-State Forum Selection Clauses Federal Court Rejects Massachusetts’s Statute On Out-of-State Forum Selection Clauses
September 19, 2022
LES InsightsArticles
A Court May Shorten the Duration of a Non-Compete Clause A Court May Shorten the Duration of a Non-Compete Clause
September 12, 2022
LES Insights“Companies doing deals and embarking on exciting collaborations also find advanced professionals to rely on: recommended alongside Kacedon on the transactions table are licensing mavens John Paul and William Pratt.”
Intellectual Asset Management Patent 1000
“Licensing Executives Society board member Paul is seen by his clients as ‘a core team member.’”
Intellectual Asset Management Patent 1000
“‘John’s curiosity, knowledge and deep experience make him indispensable to strategic discussions, and his insight into IP design and architecture is vital in business model planning.’”
Intellectual Asset Management Patent 1000
“‘When I think of John Paul, I think of a core member of my team,’ a client says about the firm’s IP licensing leader, adding ‘he has the curiosity and the vision to ask penetrating questions about a company's business strategy.’”
Managing Intellectual Property’s IP Stars
“A board member of the Licensing Executives Society International, Paul is another top licensing authority.”
Intellectual Asset Management Patent 1000
“He [Brian Kacedon], John Paul and William Pratt form a strong backbone to the transactional practice.”
Intellectual Asset Management Patent 1000
“Companies doing deals and embarking on exciting collaborations also find advanced professionals to rely on: recommended alongside Kacedon on the transactions table are licensing mavens John Paul and William Pratt.”
Intellectual Asset Management Patent 1000
“Licensing Executives Society board member Paul is seen by his clients as ‘a core team member.’”
Intellectual Asset Management Patent 1000
“‘John’s curiosity, knowledge and deep experience make him indispensable to strategic discussions, and his insight into IP design and architecture is vital in business model planning.’”
Intellectual Asset Management Patent 1000
“‘When I think of John Paul, I think of a core member of my team,’ a client says about the firm’s IP licensing leader, adding ‘he has the curiosity and the vision to ask penetrating questions about a company's business strategy.’”
Managing Intellectual Property’s IP Stars
“A board member of the Licensing Executives Society International, Paul is another top licensing authority.”
Intellectual Asset Management Patent 1000
“He [Brian Kacedon], John Paul and William Pratt form a strong backbone to the transactional practice.”
Intellectual Asset Management Patent 1000
Press Release
45 Finnegan Attorneys Recommended by Intellectual Asset Management; Firm Continues to Be Top Ranked 45 Finnegan Attorneys Recommended by Intellectual Asset Management; Firm Continues to Be Top Ranked
July 8, 2022
Intellectual Asset ManagementAnnouncement
More than 30 Finnegan Attorneys Named to IP Stars List by Managing IP More than 30 Finnegan Attorneys Named to IP Stars List by Managing IP
June 1, 2022
Managing Intellectual PropertyCommentary
How I Made It to Leadership: 'Choose the Right Organization Aligned with Your Interests and Abilities,' Says John Paul of Finnegan How I Made It to Leadership: 'Choose the Right Organization Aligned with Your Interests and Abilities,' Says John Paul of Finnegan
May 3, 2022
Law.comPress Release
38 Finnegan Attorneys Named Managing Intellectual Property IP Stars; Firm Maintains Tier 1 Rankings 38 Finnegan Attorneys Named Managing Intellectual Property IP Stars; Firm Maintains Tier 1 Rankings
July 8, 2021
Managing Intellectual PropertyPress Release
40 Finnegan Attorneys Ranked in IAM Patent 1000 40 Finnegan Attorneys Ranked in IAM Patent 1000
July 8, 2021
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