John_Paul
John C. Paul
Partner
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  • 901 New York Avenue, NW
  • Washington, DC 20001-4413

John C. Paul

Partner

  • 901 New York Avenue, NW
  • Washington, DC 20001-4413
John_Paul

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 currently serving as president-elect for 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 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 weekly articles for LES Insights 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.

Insights

Articles

Agreements on a Forum for Resolving Patent Disputes Generally Waive the Ability to Later Object to That Forum Agreements on a Forum for Resolving Patent Disputes Generally Waive the Ability to Later Object to That Forum

October 15, 2020

LES Insights

Conference

LES 2020 Virtual Annual Meeting LES 2020 Virtual Annual Meeting

October 15-20, 2020

Virtual

Articles

Granting or Recording a Security Interest in a Patent at the USPTO Does Not Deprive the Patent Owner of the Ability to Enforce the Patent Granting or Recording a Security Interest in a Patent at the USPTO Does Not Deprive the Patent Owner of the Ability to Enforce the Patent

October 6, 2020

LES Insights

Articles

To Avoid an Allegation that a Patent Assignor Is Estopped from Arguing that an Asserted Patent Is Invalid, the Assignor Estoppel Defense Should Be Disclosed in a Timely Fashion or the Late Disclosure Should be Substantially Justified and Harmless To Avoid an Allegation that a Patent Assignor Is Estopped from Arguing that an Asserted Patent Is Invalid, the Assignor Estoppel Defense Should Be Disclosed in a Timely Fashion or the Late Disclosure Should be Substantially Justified and Harmless

September 30, 2020

LES Insights

Articles

Implementers of Standard Essential Patents in Germany Must “Clearly and Unambiguously” Express Their Willingness to Take a License Under Fair, Reasonable, and Non-Discriminatory Terms Implementers of Standard Essential Patents in Germany Must “Clearly and Unambiguously” Express Their Willingness to Take a License Under Fair, Reasonable, and Non-Discriminatory Terms

September 15, 2020

LES Insights

Articles

A U.S. Court Can Dismiss a Case Involving Patent Infringement and Breach of Contract Based on an Exclusive License Agreement to Manufacture the Patented Invention When the Parties Reside, and the Manufacturing Occurs, Outside the U.S. A U.S. Court Can Dismiss a Case Involving Patent Infringement and Breach of Contract Based on an Exclusive License Agreement to Manufacture the Patented Invention When the Parties Reside, and the Manufacturing Occurs, Outside the U.S.

September 3, 2020

LES Insights
415 more

Professional Recognition

“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

“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

News

Press Release

Finnegan Maintains Top Rankings in 2020 IAM Patent 1000 Guide Finnegan Maintains Top Rankings in 2020 IAM Patent 1000 Guide

June 17, 2020

Intellectual Asset Management

Press Release

31 Finnegan Attorneys Named Managing Intellectual Property IP Stars 31 Finnegan Attorneys Named Managing Intellectual Property IP Stars

May 4, 2020

Managing Intellectual Property

Press Release

IAM 2019 Patent 1000 Guide Continues to Rank Finnegan as a Top Tier IP Firm IAM 2019 Patent 1000 Guide Continues to Rank Finnegan as a Top Tier IP Firm

June 24, 2019

Press Release

Managing Intellectual Property Recognizes 32 Finnegan Attorneys Worldwide as “IP Stars” Managing Intellectual Property Recognizes 32 Finnegan Attorneys Worldwide as “IP Stars”

May 20, 2019

Managing Intellectual Property

Press Release

IAM 2018 Patent 1000 Guide Recognizes Finnegan with Top Honors IAM 2018 Patent 1000 Guide Recognizes Finnegan with Top Honors

June 8, 2018

Intellectual Asset Management

Press Release

Managing Intellectual Property Names 34 Finnegan Attorneys as “IP Stars” Managing Intellectual Property Names 34 Finnegan Attorneys as “IP Stars”

May 18, 2018

Managing Intellectual Property
19 more

Professional Activities

  • Licensing Executives Society International
    (president-elect, 2020-present; international delegate; treasurer, 2017-2019; member of the board, 2014-present; vice president, 2014-2017; chairman, High Technology Committee, 2012-2014; chairman, Engineering Transportation and Physical Sciences Committee, 2009-2010; co-chairman Americas Committee, 2005-2009)
  • Licensing Executives Society U.S.A. and Canada
    (counsel to the board, 2012-2014; vice president, 2006-2012; trustee, 2005-2012; chairman, Washington Chapter, 1994-2004; chairman and member of various committees, 1991-present)
  • American Intellectual Property Law Association
    (chairman, India Subcommittee, Foreign and International Law Committee, 1994-1995)
  • American Society of Mechanical Engineers
    (chairman, Technology and Society Division, 1998-2000
  • American Society of Mechanical Engineers, Technology and Law Committee
    (chairman, 1998-1999)
  • American Society of Mechanical Engineers
    (Industry/Laboratory Technology Transfer Committee, 1990-1999)
  • Washington Area Lawyers for the Arts
    (board of directors, 1997-present)
Admissions and Education

Admissions

  • District of Columbia
  • Ohio
  • U.S. District Court, District of Columbia
  • U.S. Court of Appeals, D.C. Circuit
  • U.S. Court of Appeals, Federal Circuit
  • Supreme Court of the United States
  • U.S. Patent and Trademark Office

Education

Case Western Reserve Law School
J.D., 1979
Brown University
A.B., Mechanical Engineering, 1976

John's Practices

Patent Litigation
Arbitration and Other ADR
Pre-Trial Strategy
Settlement
Patent Office Examinations
Appeals to the PTAB
Prosecution
Reexaminations
Reissue Proceedings
Patent Portfolio Management, Monetization, and Transactions
Antitrust and Misuse
Due Diligence
Licensing, Pooling, and Other Transactions
Opinions and Counseling
Patent Mining and Mapping
Portfolio Management
Trade Secrets

John's Industries

Chemical, Industrial, and Materials
Additive Manufacturing
Manufacturing
Textiles
Communications
Financial Services and Business Systems
Internet of Things (IoT)
Consumer Goods and Services
Consumer Products
Electronics and Information Technology
Electrical and Computer Technology
Nanotechnology
Robotics
Energy
Clean Energy and Renewables
Hospitality, Gaming, and Leisure
Media
Sports, Fitness, and Outdoor Recreation
Life Sciences
Digital Health
Medical Device and Diagnostics
Transportation and Logistics
Aerospace, Aviation, and Unmanned Aerial Systems (UAS)
Automotive

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