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Services Available
Mine and map your portfolio.
Unlocking and understanding your assets in a larger context can reveal your position in the market and expose roadblocks to maneuver around and opportunities for moving forward with confidence.
Our experience enables us to search prior art, literature, and relevant patents around the globe. Our mapping skills and techniques enable us to outline the applicable information in a highly accessible and easily understood format. But there is no substitute for human knowledge and experiences when interpreting the data and how it can be used to shape your IP business strategy within the context of the market. We help you understand the strength and breadth of your patents and whether obstacles are something to challenge or to design around. When you are facing a bet-the-company decision, this insight is vital to your success.
Evaluate your IP assets through opinions and counseling.
If your company is considering litigation, a new line of business, the development of an innovative product, mining its portfolio, or licensing or selling patents, you need to understand your current legal and business position, risks, and options. Finnegan provides the information and guidance to help you make the right choices for your business.
We render hundreds of opinions a year ranging from a single opinion on a specific patent to providing long-term, ongoing counseling on complex patent portfolios or litigation. We routinely address patent validity, enforceability, misuse, design-around issues, licensing potential, IP contract construction and enforcement, and export controls. We regularly partner with our clients’ legal, business, and technical staff to identify the potential for risk and reward, from idea to revenue-generating portfolios.
In addition to transactional counseling, we routinely advise clients on prelitigation strategies. Our extensive litigation experience gives us firsthand insight into the various types of arguments opponents may raise. Combining our litigation and IP transactional experience allows us to help guide our clients to favorable settlements of disputes before or during litigation.
Generate value through 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. We have advised small entrepreneurs and Fortune 50 corporations in virtually every type of IP-related transaction. We have helped clients set up and run licensing programs that have generated significant revenue streams, and we have worked with clients to pool patents and deal with standards issues. Our legal and technical experience and our background in the business of exploiting technology and IP assets bring our clients a strategic advantage. IP transactions, often global in nature, require a business-savvy partner with legal and technical expertise.
Transactions may be simple licenses for income or complex strategic alliances providing product and market access to both parties. We can analyze the potential for generating royalty income from existing IP rights, then formulate and execute licensing programs to help you realize full revenue potential. We advise on everything in a transaction program ranging from the initial confidential evaluation agreement through management of the portfolio of executed IP agreements. As business relationships evolve, we assist in enforcing or amending obligations in those agreements.
Finnegan brings generations of transactional experience and is a pioneer in the development of IP licensing. Our lawyers have played and continue to play an instrumental role in the establishment and ongoing management of the Licensing Executives Society and continue to serve in leadership roles in the United States and internationally. We are recognized authorities in IP transactions law and serve as adjunct professors and contributing authors to licensing and transactional publications. Many consider us to have “written the book” on IP licensing.
Export control and regulatory guidance
Developing an international patent strategy requires careful navigation of shifting regulatory and administrative requirements of trade and export controls. The reach 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. In the current global environment, the trend is toward aggressive enforcement, and the penalties are severe. Playing by the rules is essential. A failure to understand the nuances could mean losing access to key markets and the potential of fines and prosecutions through inadvertent violation of export regulations.
Finnegan brings highly focused experience in this specialized area. With our extensive resources, we are well positioned to guide you through the complex maze of U.S. regulations governing the export of materials, software, or technology and even the transfer of knowledge. We regularly advise clients on export regulations, provide opinions on classifications, apply for licenses or license exceptions, and, should the need arise, represent you in enforcement actions.
Government contracts
Innovative companies recognize the opportunities the U.S. government provides to reach new markets and increase revenue. But this collaboration is often characterized by unique legal nuances and complexities when it comes to protecting your IP. For example, your proprietary information might be inadvertently released through the Freedom of Information Act. To protect yourself, you need a firm with experience, a firm that knows the current law, has participated in its evolution over the course of four decades, and understands where red tape may stall progress.
Finnegan has represented and worked with many federal agencies and departments—including virtually every federal research funding agency. Understanding the intricacies involved in government contracting agreements is essential when negotiating with the government. Our experience and expertise enable us to identify opportunities and challenges quickly and efficiently.
As research and development expenditures soar, public–private research has become an increasingly attractive vehicle for funding innovative research. Finnegan can help protect your interests as you obtain grants or work with national laboratories and funding agencies to research innovative solutions.
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.
Global patent analysis for renewable energy
A European company asked us to conduct IP due diligence on a technology it was looking to acquire. This renewable energy focused on the production of photovoltaic cells. In less than one month, we coordinated prior art searches in Europe and the United States, 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.
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.
Leveraging patents for digital compression 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.
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.
Patent pooling in standards arena
We assisted our client in developing and negotiating an arrangement for pooling essential patents for an adopted standard. We created contracts by which the client became the agent for the patent owners in granting licenses to all applicants on a RAND basis.
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.
Start-up licensing program
A start-up company providing the technology for LCD panels faced a difficult licensing challenge in the worldwide fragmented production environment. We assisted the client in formulating a licensing program that provided necessary rights to the various levels of value production in countries around the world while avoiding exhaustion of the client’s IP rights through unrestricted distribution of components.
Strategic alliance in medical diagnostics
Our client had the technology and the IP but not the market presence. A major pharmaceutical company needed a portfolio of diagnostic products. We assisted our client in a lengthy negotiation over a partnership arrangement that allowed both companies to prosper. While IP was an important part of the transaction, we assisted in creating contractual protection of the client’s business interests, particularly in the event of a separation.
Strategic IP management for a client investigating nanotechnology
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 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.
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.
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