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 John_Paul
John C. Paul
Partner
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  • 901 New York Avenue, NW
  • Washington, DC 20001-4413
+1 202 408 4109
john.paul@finnegan.com john.paul@finnegan.com

John C. Paul

Partner

  • +1 202 408 4109 +1 202 408 4109
  • john.paul@finnegan.com john.paul@finnegan.com
  • 901 New York Avenue, NW
  • Washington, DC 20001-4413
  • vCard
 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 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.

Insights

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 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 Insights

Articles

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 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 Insights

Articles

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 A Non-Exclusive Trademark Licensee Needs an Explicit Right To Sue for Trademark Infringement

September 26, 2022

LES Insights

Articles

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 Federal Court Rejects Massachusetts’s Statute On Out-of-State Forum Selection Clauses

September 19, 2022

LES Insights

Articles

A Court May Shorten the Duration of a Non-Compete Clause

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

Articles

An Agreement’s Choice of Law and Forum Selection Clauses Controlled the Location of Lawsuits Against a Former Employee

An Agreement’s Choice of Law and Forum Selection Clauses Controlled the Location of Lawsuits Against a Former Employee An Agreement’s Choice of Law and Forum Selection Clauses Controlled the Location of Lawsuits Against a Former Employee

September 5, 2022

LES Insights
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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

“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

News

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 Management

Announcement

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 Property

Commentary

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.com

Press 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 Property

Press Release

40 Finnegan Attorneys Ranked in IAM Patent 1000 40 Finnegan Attorneys Ranked in IAM Patent 1000

July 8, 2021

Press Release

Finnegan Partner John Paul Becomes Licensing Executives Society International President Finnegan Partner John Paul Becomes Licensing Executives Society International President

June 2, 2021

More

Professional Activities

  • Licensing Executives Society International
    (immediate past-president, 2022-present; president, 2021-2022; president-elect, 2020-2021; 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

Enforcement and Litigation
Antitrust and Misuse
Arbitration and Other ADR
Patent Litigation
Pretrial Strategies
Trade Secrets
Patent Invalidation Proceedings
Patent Reexaminations
Portfolio and Market Strategy
Appeals to the PTAB
Due Diligence
IP Portfolio Management
Licensing, Pooling, and Other Transactions
Opinions and Counseling
Patent Mining and Mapping
Patent Prosecution
Patent Reexaminations
Patent Reissues
Trade Secrets

John's Industries

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

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