Experience

Patent Prosecution

About

Patent Prosecution is part of our work in European and UK IP Law.

Finnegan's London office drafts, files, and prosecutes patent applications at the European Patent Office (EPO) and UK Intellectual Property Office (UKIPO), and also under the Patent Cooperation Treaty (PCT). Our European patent attorneys often work side by side with our U.S. attorneys to provide clients with strategic and cost efficient coordination of their patent portfolio. Our European patent attorneys also have substantial opposition and appeal experience that enables them to prosecute applications with an eye toward enforcement as well as defending against challenges.

Our London team includes recognized experts and seasoned professionals, as well as experienced junior team members, each with extensive technical and/or prosecution experience. They all have science and/or engineering backgrounds, and many hold advanced degrees in their technical fields or have worked in the industry, with the technologies at issue spanning nearly every industry sector.

Our European patent attorneys also have particular expertise in requirements for PCT applications, including how to draft and efficiently prosecute an "EPO friendly" PCT application which satisfies the requirements in Europe, the United States, and elsewhere. This coordinated approach helps to improve the quality and efficiency of prosecution, thereby reducing costs.

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Experience

Finnegan designed and prosecuted a global patent strategy with client Eisai on MORAb-202, an antibody-drug conjugate (ADC), providing pivotal support for Eisai’s exclusive, global strategic collaboration agreement with Bristol-Myers Squibb Company (BMS) to co-develop and co-commercialize the asset. Under the publicly announced financial terms of the agreement, BMS will pay Eisai $650 million, including $200 million as payment towards Eisai’s research and development expenses. Eisai is also entitled to receive up to $2.45 billion in potential future development, regulatory, and commercial milestones.

Nuvera Fuel Cells retained Finnegan to manage all of the company's IP portfolio assets, which were recently consolidated. Much of the management is focused on the procurement of patents, both U.S. and foreign, directed to various aspects of fuel cell technology. The firm's representation has included providing guidance on inventorship determinations, disclosure agreements, and portfolio landscaping.

Finnegan prepared and prosecuted patents for startup Hutchison Medipharma in the United States for the treatment of metastatic colorectal cancer. Those patents cover a small molecule, fruquintinib, which received approval in China.

Oversaw prosecution of VirnetX’s global patent portfolio, which includes 185 U.S. and international patents and pending applications.

California-based ACTON, Inc. received funding from over 700 backers in over 40 countries through its Kickstarter campaign to start production of its smart electric RocketSkates^® roller skates. This fast-moving company, whose innovative personal transportation products blend form and function through cutting-edge designs, has relied on Finnegan to protect its designs in the United States and internationally. After preparing and filing design patent applications in the United States, Finnegan has coordinated the prosecution of counterpart cases by working with its extensive network of international partners across the globe, including in European Union, China, Japan, and South Korea.

Finnegan is working with AeroMobil to protect its revolutionary technology in Europe, the United States, and around the world. The work includes invention capture, drafting, and prosecution of new applications. Finnegan’s European and U.S. attorneys work closely to coordinate the application drafting and prosecution strategy with foreign counsel around the world.

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