パテント・マイニング及びマッピング

Finnegan was selected to supervise the identification and development of native intellectual property (IP) and the oversight of the licensed IP of numerous academic partners in the U.S. and Europe.  As an ongoing exercise, the company’s portfolio is landscaped in the context of the industry for business, legal and research and development (R&D) decisionmakers.  Identification of acquisition candidates and targets for both in- and out-licensing is based on current information from these activities. New product development risks are also mitigated by leveraging an up-to-date understanding of competitors’ IP positions.

A European company asked us to conduct intellectual property (IP) due diligence on a technology it was looking to acquire. The renewable energy focused on the production of photovoltaic cells. In less than one month, we coordinated prior art searches in Europe and the U.S., evaluated the search results containing over 500 U.S. and European patents, provided our opinion on freedom to operate with the target technology, and set up a system to monitor European and U.S. patents that may be granted in the future.

A leading healthcare company that develops wireless communication systems for managing patient care turns to Finnegan for counsel in many different facets of intellectual property (IP). We study the patent landscape for wireless health management and assist the company in weaving its way through patents of its competitors; we obtain patent protection for its technology and trademark protection for its brands; and we provide guidance in drafting agreements for the transfer of technology.

When a leading patent management company wanted to generate royalties from patents developed and owned by an international group of research and operating companies, it turned to Finnegan for assistance in setting up and running a licensing and enforcement program involving a full range of activities—analyzing the patents, identifying infringers in the marketplace, negotiating and drafting license agreements, litigating to enforce the patents, and providing strategic advice throughout the process.

One of our long-standing clients asked us for advice on how to expand its patent portfolio to include nanotechnology. We researched the activities of its competitors, reported our findings, and suggested a course of action to a group of its senior intellectual property (IP) counsel and technical leaders. Our report focused on the implications of nanotechnology in the client’s industry and identified desirable avenues of research and product development where nanotechnology could be implemented and protected to provide an advantage in the marketplace.