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 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.
Articles
UK Supreme Court Holds That UK Courts May Set Global FRAND Terms UK Supreme Court Holds That UK Courts May Set Global FRAND Terms
December 1, 2020
LES InsightsArticles
Open Source Software Copyright Licenses Did Not Cause Trademark to Be Abandoned Under "Naked Licensing" Theory Open Source Software Copyright Licenses Did Not Cause Trademark to Be Abandoned Under "Naked Licensing" Theory
October 21, 2020
LES InsightsArticles
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 InsightsConference
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 InsightsArticles
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“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
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 ManagementPress Release
31 Finnegan Attorneys Named Managing Intellectual Property IP Stars 31 Finnegan Attorneys Named Managing Intellectual Property IP Stars
May 4, 2020
Managing Intellectual PropertyPress 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 PropertyPress 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 ManagementPress Release
Managing Intellectual Property Names 34 Finnegan Attorneys as “IP Stars” Managing Intellectual Property Names 34 Finnegan Attorneys as “IP Stars”
May 18, 2018
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