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Practice Areas & Industries: Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P.

 



Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P.


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Practice/Industry Group Overview

Clear guidance in the changing patent landscape.
We have entered a new era in patent protection. Recent U.S. Supreme Court and Federal Circuit cases have scaled back the rights of patent holders and applicants. Additional legislative and patent office rule changes are expected, and they may significantly alter patent prosecution strategy. At Finnegan, we see these developments as an opportunity to think creatively. You need a focused approach and experience on your side to obtain the best possible protection. We apply our experience to your advantage. More than 60 of our lawyers have served as patent examiners at the U.S. Patent and Trademark Office. The insights of these professionals, along with their deep technical backgrounds, enable us to advise you on the best path to protect your valuable IP assets.


 

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Your innovations drive change. We help protect them.
Finnegan has both the focus and breadth of talent to protect your most important IP assets. We practice in virtually every area of intellectual property law and bring a meticulous comprehension of the ideas we protect, advocate, and leverage. Our patent prosecution practice prides itself in delivering solid protection for some of the most complex and significant innovations that shape advances in business and science.

More than 90 of our professionals hold Ph.D.’s ranging from neurobiology to electrical engineering. We have assisted businesses and organizations in industries as diverse as consumer goods, pharmaceuticals, aerospace, and agriculture to name a few. We regularly join brainstorming meetings with our clients and inventors. Our deep understanding of the technology allows us to build strong, defensible patents. We work with our clients to build effective patent strategies from idea to issuance and beyond.

Your ideas are global. So is our network.
Inventiveness and risk-taking must be rewarded both in the U.S. and abroad for your company or organization to prosper. Our offices in Asia and Europe and our professional relationships with over 200 firms throughout the world help our clients obtain patent protection in other countries and help our international clients obtain patent protection in the U.S.

Areas of patent prosecution.
We work with clients to devise effective strategies, from assessing needs for patent protection, through defending patents in court. Our patent prosecution practice covers all areas of patent law including:

  • Application preparation, filing and prosecution strategies: 
    • Utility, plant, and design inventions
    • U.S. and foreign protection including practice under the Patent Cooperation Treaty (PCT)
  • Administrative appeals
  • Interferences
  • Petitions and protests
  • Reissues and reexaminations

Beyond the patent.
As your needs evolve, Finnegan brings experience in patent transactions, due diligence, portfolio management, opinions, and counseling. The strongest and best patents are less likely to be litigated. But should your protection be challenged or infringed, Finnegan brings proven experience and an impressive track record. Finnegan was ranked the #1 U.S. Law Firm for Patent Litigation and Noncontentious Patent Work from 2002- 2008 (Managing Intellectual Property World IP surveys). In addition, our lawyers have argued more IP cases before the U.S. Court of Appeals for the Federal Circuit than any other law firm. More than 40 of our lawyers are former clerks of the Federal Circuit or its predecessor courts. And several of our lawyers have argued cases before the U.S. Supreme Court.

We work with diverse innovators.
Finnegan regularly partners with companies and organizations of all sizes from innovative startups to global leaders across all industries. Our counseling is tailored to your specific needs.  Representative clients include:

  • Applied Biosystems
  • AstraZeneca
  • Boston Scientific
  • Caterpillar Inc.
  • Eastman Chemical Company
  • FivePrime Therapeutics, Inc.
  • Imerys
  • Intertrust
  • Nuvera Fuel Cells, Inc.
  • sanofi-aventis
  • SAP AG
  • Sony
  • Toshiba Corporation

Representative Engagements

Comprehensive patent transactions and strategic counseling for an international leader in the mining and distribution of industrial minerals                                                                       

Since its founding, we have provided strategic intellectual property counseling and representation to Imerys, including its French parent company, international subsidiaries, U.S. headquarters, and multiple domestic business units. We have evaluated developing technology for patentability; drafted and prosecuted patent applications in the U.S. Patent and Trademark Office and abroad; analyzed patent enforcement opportunities; defended against third-party charges; and provided legal opinions on several aspects involved in bringing new products to market and maintaining Imerys’s strong, competitive position in the kaolin clay market.

Domestic and international patent portfolio management for a developer of digital rights management solutions           

Intertrust is a leading developer of digital rights management (DRM) solutions and trusted computing platforms; the company is on the cutting edge of developing and monetizing next-generation technologies and inventions. Finnegan currently prosecutes and manages its entire patent portfolio.

Ensuring the broadest possible patent protection                   

We provide in-depth patent prosecution and counseling services for one of the world's leading solar companies. Our service includes preparing patent applications directed to novel silicon materials and processing technologies, specifically geared toward photovoltaic applications.

IP counsel to a global electronics innovator                     

Toshiba is one of Finnegan’s long-standing clients. The firm prosecutes hundreds of U.S. patent applications per year in various technologies, including computers, communications, electronics, semiconductors, and business methods. Toshiba turns to us for strategic advice and opinions regarding their extensive patent portfolio.

Managing the global portfolio for fuel cell patents            

Nuvera Fuels 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.

Protecting an international leader in chemicals, fibers and plastics                                                                                  

Finnegan’s work for Eastman Chemical covers a wide variety of technologies, including Eastman’s valuable specialty polyester resin portfolio. Our work has involved drafting and prosecuting applications for commercially important technologies; specialty prosecution proceedings, such as reexaminations and reissues; the preparation of opinions; prelitigation investigations; and issues involving licensing.

Protecting business-method patents for a travel-related company                                                                                             

We represented a major travel-related company in securing worldwide patent protection on a diverse portfolio of software and business-method–related inventions. We advised and defended the client on various allegations of patent infringement and third-party claims for indemnification against infringement allegations.

Protecting patents for a leader in medical devices      

Finnegan has represented Boston Scientific in a variety of patent matters since 1995. The work has included prosecution of hundreds of U.S. and foreign patent applications in the medical device area. Finnegan has also represented Boston Scientific in interferences, due diligence investigations of target companies, product freedom-to-operate opinions, reissue applications, and European oppositions.

Securing solid patents for a range of high-tech applications

We worked with our client in acquiring patent protection for its technology related to the deposition of high-dielectric layers and development of applications for the resulting layers. Such technology is applicable to optically transparent barrier layers for solar cell and OLED applications, dielectric materials for high energy-density capacitors, and materials for high-efficiency solid-state batteries.

The world’s largest maker of construction and mining equipment, diesel and natural gas engines, and industrial gas turbines relies on us for patent protection                            

Since 2000, Finnegan has worked closely with the inventors and legal staff at Caterpillar Inc. The firm has prepared and is prosecuting several hundred patent applications in the U.S. and in many foreign countries. We have also assisted Caterpillar with many opinion matters involving issues of patent validity, infringement, and other subjects. During our relationship, we have also advised on intellectual property issues related to government contracts, licensing, and copyrights, and more recently, we have taken on a significant role protecting Caterpillar's well-known trademarks around the world.