Experience

Diligence, Licensing, and Opinions

About

Serious business decisions, such as investing in a new product or company, launching a new brand, acquiring intellectual property assets, or forming a partnering relationship, require serious investigation and analysis. IP due diligence plays a significant role in decisions about whether to proceed with a deal and its final valuation and structure. There is no substitute for technical expertise and practical experience in these critical matters. Finnegan understands that investigations must move quickly and efficiently, and we have sophisticated teams ready to assist with a variety of techniques for conducting diligence and opinion projects in a timely and cost-effective manner with the flexibility to adapt to any unique situation. We help assess the competitive landscape and provide robust opinions to confirm noninfringement or develop arguments that could clear the way for commercial goals. We also consider potentially impactful IP-adjacent spaces such as trade and export controls or privacy issues. Through decades of closely working with clients in mature and emerging industries, we know what to ask and where to focus so we deliver what you need.

The services and guidance you need to meet business objectives

Experienced counsel is equally important for managing IP assets. Finnegan was one of the first law firms to develop a full-service practice for managing and monetizing IP portfolios. We analyze portfolios to understand the opportunities, increase the value of the portfolios by additional filings and acquisitions, identify business opportunities, create a plan for generating revenue, and then execute the plan by selling or licensing the assets. We apply distilled best practices in advising innovative startups, multinational corporations, and other IP-driven organizations that turn to Finnegan for guidance when considering their IP options.

To ensure that business plans are built on strong IP portfolios, we help identify and prioritize assets, often with recommendations to license technologies or sell marginal assets to generate revenue, to donate or even abandon assets to reduce costs, and to identify acquisitions to strengthen or expand an existing portfolio. We help clients set up and run licensing programs that can generate significant revenue streams. Transactions could be simple licenses for income or complex strategic alliances providing product and market access to both parties. We advise on everything in a transaction program, ranging from the initial confidential evaluation through management of the portfolio of executed IP agreements. Whether acquiring or transferring rights, we are with you in the boardroom and at the negotiating table.

Partners in advancing IP and brand value

Protecting and promoting innovation and market trust is a foundational tenet for Finnegan. Through a culture of service and leadership in professional bar and legal associations, we collaborate with colleagues in industry and government in promoting IP rights and high professional standards. Organizations we are involved with include: American Intellectual Property Law Association (AIPLA); American Bar Association; Association of Intellectual Property Experts (VPP); Chartered Institute of Patent Attorneys (CIPA); European Patent Institute (EPI); Federation Internationale des Conseils en Propriete Industrielle (FICPI); German Association for the Protection of Intellectual Property & Copyright (GRUR); Institute of Professional Representatives before the European Patent Office (epi); Intellectual Property Owners Association (IPO); International Association for the Protection of Intellectual Property (AIPPI); International Association of Privacy Professionals (IAPP); Licensing Executives Society (LES) USA and Canada, China; and Licensing Executives Society International (LESI).

Everyone in this practice

Practice Areas

Due Diligence

In fast-moving, high-pressure mergers, acquisitions, partnering, and investment transactions, obtaining an accurate and comprehensive intellectual property evaluation is critical.

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Export Control

The reach of trade and export requirements is broad, affecting U.S. companies or organizations that export materials, software, and technologies, as well as non-U.S. companies that may utilize such exports in products of their own.

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Freedom to Operate Opinions

A Freedom to Operate (FTO) opinion helps limit the risk of future litigation and avoid unnecessary expense related to a new product or acquisition.

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Licensing, Pooling, and Other Transactions

Leveraging patents, trade secrets, or portions of an IP portfolio can often generate revenue streams, open new markets, or shut down competitors.

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Opinions and Counseling

Opinions of IP counsel ranging from freedom to operate to licensing potential are crucial for innovative companies assessing the risk and reward for investing in product commercialization.

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Patent Mining and Mapping

Understanding your IP assets in a larger context can help reveal market position, identify potential threats or roadblocks to maneuver around, and expose white space and opportunities for moving forward with confidence.

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Privacy

From data gathering to data storage, from privacy by design to governance and legal compliance, all industries and sectors are faced with complex and often unsettled issues related to privacy.

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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.

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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.

Finnegan assists Tetra Tech, Inc., a leading provider of high-end consulting and engineering services, with comprehensive patent services including litigation, counseling, and opinions related to railroad technologies. Finnegan also provides trademark search, opinion, and prosecution services to Tetra Tech.

Finnegan assists Archer Aviation, a leading urban air mobility company responsible for designing, developing, manufacturing, and operating electric vertical takeoff and landing aircrafts to carry passengers, with matters related to patent application drafting and global prosecution. We also provide patent counseling services.

Finnegan represents Huddly AS, a leading developer of advanced camera systems for team collaboration, in patent prosecution and counseling matters. The firm works closely with Huddly to shape a comprehensive patent strategy that protects its portfolio of videoconferencing technologies, which integrate design, hardware, software, and artificial intelligence (AI) to deliver intelligent, high-performance imaging solutions.

Finnegan represents BrainCo, a developer of brain-machine interface (BMI) wearables that combine electroencephalography (EEG) signal processing with artificial intelligence (AI) and machine learning (ML) to enable users to control electronic devices using brain signals. The firm works with BrainCo to develop and implement its intellectual property strategy, including drafting and prosecuting utility and design patent applications, in support of the company’s efforts to build a robust patent portfolio covering innovations and designs related to BMI technologies used in toys, smart home appliances, and robotic devices.