John C. Paul has more than 30 years of experience in intellectual property licensing, litigation, and prosecution, with a particular focus on strategic planning, IP portfolio evaluation and development, complex transactions, due diligence investigations, and licensing and enforcement of IP portfolios to generate revenue.
He leads the firm’s IP management and transaction section, and is designated as a Certified Licensing Professional (CLP). John analyzes patent portfolios for a wide range of companies and industries, including multimedia electronics, aerospace, medical devices, and consumer products.
He develops strategies and creates systems to help companies understand and effectively communicate the legal and commercial significance of IP portfolios, develop more robust portfolios aligned with their business objectives, generate revenue by monetizing those portfolios, and enter into collaboration agreements.
He has set up and directed licensing and enforcement programs that have generated significant royalty revenue for leading technology companies; set up and conducted multiple-round private auctions to sell patent portfolios; led negotiations related to IP issues in business divestitures and other complex transactions; conducted IP due diligence and negotiations for strategic acquisitions of patent portfolios; negotiated and drafted a wide range of agreements relating to the development and use of intellectual property; and litigated a wide range of IP issues relating to infringement and breach of agreements.
John serves as a board member and treasurer of the Licensing Executives Society International. He previously served as counsel to the board, trustee, and vice president of the Licensing Executives Society U.S.A. and Canada. A frequent lecturer on patent law, licensing, and IP management, John also writes weekly articles for LES Insights on U.S. cases affecting licensing and other transactions.
He previously taught patent law as a member of the adjunct faculty of the Catholic University of America law School. John’s community activities include coordinating Finnegan’s implementation and management of pro bono lawyer referral service for Washington Area Lawyers for the Arts (WALA).
John has been recognized by Intellectual Asset Management (IAM) magazine as one of 250 leading IP strategists; as one of 250 of the world’s leading patent and technology licensing practitioners; and for patent transactions in the D.C. area. Managing Intellectual Property named him an “IP Star” in Washington, D.C. and The Legal 500 U.S. listed him as one of the leading lawyers in patent licensing and transactional work.
- Case Western Reserve Law School J.D., 1979
- Brown University A.B., Mechanical Engineering, 1976
- District of Columbia
- U.S. District Court, District of Columbia
- U.S. Court of Appeals, D.C. Circuit
- U.S. Court of Appeals, Federal Circuit
- Supreme Court of the United States
- U.S. Patent and Trademark Office
Professional Activities :
- Licensing Executives Society International (international delegate -present; treasurer, 2017-present; member of the board, 2014-present; vice president, 2014-2017; chairman, High Technology Committee, 2012-2014; chairman, Engineering Transportation and Physical Sciences Committee, 2009-2010; co-chairman Americas Committee, 2005-2009)
- Licensing Executives Society U.S.A. and Canada (counsel to the board, 2012-2014; vice president, 2006-2012; trustee, 2005-2012; chairman, Washington Chapter, 1994-2004; chairman and member of various committees, 1991-present)
- American Intellectual Property Law Association (chairman, India Subcommittee, Foreign and International Law Committee, 1994-1995)
- American Society of Mechanical Engineers (chairman, Technology and Society Division, 1998-2000)
- American Society of Mechanical Engineers, Technology and Law Committee (chairman, 1998-1999)
- American Society of Mechanical Engineers (Industry/Laboratory Technology Transfer Committee, 1990-1999)
- Washington Area Lawyers for the Arts (board of directors, 1997-present)
Rate : $$$