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

Practice/Industry Group Overview

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.

Services Available

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.

Representative Engagements

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.

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.

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.