The Legal 500

Twitter Logo Youtube Circle Icon LinkedIn Icon

Finnegan, Henderson, Farabow, Garrett & Dunner LLP

901 NEW YORK AVENUE, NW, WASHINGTON, DC 20001-4413, USA
Tel:
Work +1 202 408 4000
Web:
www.finnegan.com

Mike Jakes, Partner

Finnegan’s Mike Jakes discusses the future challenges IP firms face

What do you see as the main points that differentiate Finnegan from your competitors?

Finnegan is one of the few firms of its size that focuses on intellectual property law. With more than 300 IP professionals, we have the capacity and depth of experience to hit the ground running with virtually any technology or legal issue. But we didn’t get to be one of the world’s largest IP law firms by just growing our lawyer ranks and adding offices. We got there by truly believing in our clients while protecting, advocating, and leveraging their ideas.

Our culture is based on a simple concept—that all clients are clients of the firm. While this seems logical, the fact is that in many law firms, a client is the property of an originating partner. Since Finnegan’s founding in 1965 by good friends Marc Finnegan and Doug Henderson, the decision was deliberately made that every lawyer in their growing firm should have the same interest in serving a client as any other. And so it has always been at Finnegan that every client’s needs are the concern of every attorney and member of our staff.

Which practices do you see growing in the next 12 months? What are the drivers behind that?

Post-grant review in the U.S. Patent and Trademark Office has greatly changed the landscape of patent law in the United States, and we expect that it will continue to be a significant and growing part of our practice. Finnegan has already represented clients—petitioners and patent owners—in more than 500 proceedings before the Patent Trial and Appeal Board (PTAB) since 2012. That practice will only become more important as the validity of patents is increasingly decided in PTAB trials rather than the courts.

Another practice area that should see an increase is formal patent opinions. Since the U.S. Supreme Court’s decision in Halo Electronics v. Pulse Electronics last year, which made it easier to prove willful infringement and increased damages, accused infringers are increasingly seeking and relying on the advice of counsel to defend against willful infringement charges. As patent lawyers with technical expertise in all different fields, Finnegan will be consulted more than ever to provide this type of timely advice.

Biologics and biosimilars will also be an increasing practice area for Finnegan. The main driver is the Biologics Price Competition and Innovation Act (BPCIA), which opened the door for companies to seek FDA approval to manufacture and sell biosimilar or interchangeable versions of brand name biological products. Finnegan advises clients on virtually every intellectual property issue related to this complex and evolving area of branded biologics and biosimilars, including patent prosecution, due diligence investigations, portfolio management, and litigation.

What's the main change you've made in the firm that will benefit clients?

Our clients’ businesses and IP assets are global. To meet this challenge, Finnegan has offices in the key global markets of London, Seoul, Shanghai, Taipei, and Tokyo. This expansion has been gradual, but the change to a truly international IP firm gives us the resources and experience to formulate and execute global strategies for our clients. Our professionals are multilingual and multicultural, and they work with clients in real time around the clock and around the world. Our clients obviously benefit when we can provide them with a single coordinated strategy to protect their global IP.

Is technology changing the way you interact with your clients, and the services you can provide them?

As a firm focused on technology, Finnegan itself has always taken advantage of new technology to better serve our clients. Although we take much of it for granted today, the advances in communication have greatly improved the way we can interact with clients in real time. The proliferation of electronic documents has made litigation more costly, not less, and we’re constantly looking for ways to use technology to reduce costs while delivering the same results. We have applications that give clients access to the latest developments in the law in a focused and timely way. These are just a few of the ways that technology has changed our practice. Our clients come to us to protect their cutting-edge technology, and we need to have the best tools to do that.

But because we understand technology so well, we also know that it is only a means, not an end. We can have the best technology in the legal business (and we do), but it’s still no substitute for the investment in our people. Technology greatly improves the delivery of legal advice and services, but it’s still the knowledge and advice that matters!

Can you give us a practical example of how you have helped a client to add value to their business?

Finnegan adds value to our clients’ business by protecting their intellectual assets. As a full-service IP firm, we have the ability to protect these assets in creative ways, using patents, designs, trademarks, copyrights, trade secrets, and other techniques. We can license these assets for monetary value, or when necessary, litigate to protect them. A recent high-profile example where we did just that was a temporary restraining order we obtained for Patagonia against jackets bearing a replication of Patagonia's mountain-peak logo.

Protecting these intellectual assets is increasingly challenging, however, as the law is constantly changing. We don’t just keep up with the rapid changes in the law though—we set the pace. For example, after the America Invents Act in 2012, Finnegan was one of the first firms to file a covered business method review petition at the PTAB, the first to argue at an oral hearing before the Board, and the first to win a trial before the PTAB.

Are clients looking for stability and strategic direction from their law firms - where do you see the firm in three year's time?

Clients certainly look for stability and strategic direction from their law firms. In a topsy-turvy legal market, Finnegan has been remarkably stable. This is largely due to our focus on intellectual property law—we don’t chase after every hot new practice area or need to dump unfashionable practice groups. But with our depth of IP experience and technical expertise, we’re able to stay in front and lead the development of the law, such as we have with the PTAB trial practice. Our clients benefit because we can provide the strategic direction to protect their IP assets as the law develops and not just react to changes after they happen. Because of our solid foundation, Finnegan will continue to lead in the global protection of IP.

Legal Developments worldwide

Legal Developments and updates from the leading lawyers in each jurisdiction. To contribute, send an email request to
  • New requirement for all issuers operating on the Luxembourg Stock Exchange

    On 10 August 2017 the Luxembourg Stock Exchange announced that all domestic and foreign issuers operating on the regulated market (Bourse de Luxembourg) or on the multilateral trading facility (Euro MTF) of the Luxembourg Stock Exchange must provide their legal entity identifier (“LEI ”) codes to the Luxembourg Stock Exchange before 15 September 2017.
  • Luxembourg law on the exploration and use of space resources entered into force

    The Luxembourg law on the exploration and use of space resources of 20 July 2017 entered into force on 2 August 2017 and placed Luxembourg among the most innovative space-oriented nations in the world.
  • VAT in the GCC – Q&A updates from the UAE Ministry of Finance

    On 9 July the United Arab Emirates (UAE) Ministry of Finance (MOF) published an update of the Value Added Tax (VAT) FAQ section of its website.
  • PRIIPs KID: The final pieces of the puzzle

    The pieces of the puzzle are finally falling into place. The long-awaited level 3 and 4 measures have been published earlier this week, half a year before the PRIIPs KID becomes compulsory.
  • MiFID II: Further guidance on product governance requirements

    Amongst the numerous topics covered by the Markets in Financial Instruments Directive II (MiFID II), the European Securities and Markets Authority (ESMA) has decided to provide further guidance on the requirements regarding product governance through its guidelines dated 2 June 2017 which focus on the target market assessment by manufacturers and distributors of financial products.     
  • Arendt & Medernach is again the “Luxembourg Tax Firm of the Year”

    The partners of Arendt & Medernach are pleased to announce that their firm has been awarded once again the prestigious “Luxembourg Tax Firm of the Year” title during the International Tax Review’s European Tax Awards ceremony held at the Savoy Hotel in London on 18 May.
  • Signature of the Multilateral instrument – reservations made by Luxembourg

    On 7 June 2017, the official ceremony for the signing of the multilateral instrument (“MLI”) took place bringing to a close a process initiated last year when a consensus was reached on the wording of the MLI on 24 November 2016 (see also our newsflash dated 2 December 2016, available on our website www.arendt.com section Publications/Newsflash).
  • Arendt & Medernach: Luxembourg Law Firm of the Year

    Luxembourg, May 2017 – Arendt & Medernach is proud to have been named “Luxembourg Law firm of the year” both by Chambers & Partners and IFLR (International Financial Law Review). The prestigious trophies were both received in April in London at the respective ceremonies of the Chambers Europe Awards 2017 and the IFLR European Awards 2017.
  • First VAT EU case law on the cost-sharing VAT exemption

    The question of the scope of the cost-sharing VAT exemption, also referred to in the Council Directive 2006/112/EC of 28 November 2006 as amended ("EU VAT Directive") as “Independent Groups of Persons” or “IGPs”, is currently being debated at the Court of Justice of the EU (“CJEU”) in several cases. Last Thursday marked the first milestone regarding this specific VAT exemption since the CJEU released its judgment in the case Commission v Luxembourg (C-274/15).
  • An Introduction to Corporate Guarantee

    In the UAE, the risk management activities inherent in running a corporate or investment banking business remain of crucial importance, not least because of the strong local characteristic of “name lending”, by which is meant lending or providing other banking facilities to family or other private businesses, primarily on the strength of the “name” or “names” of the proprietors standing behind the business, rather than on the strength of the asset quality and underlying credit of the particular business. Of course, in practice, there is commercial overlap between the proprietors and the companies which they own, but the credit analyses can break down where poor banking practices and procedures result in poorly constructed legal documentation and gaps in guarantee and security support documents.