The patent prosecution group at Finnegan, Henderson, Farabow, Garrett & Dunner LLP is well-regarded for its provision of ‘outstanding, commercially-focused legal advice’, which includes the establishment, preparation, filing and management of patent portfolios; inventions and foreign protection issues, as well as the handling of reissues; re-examinations, IPRs, PGRs, and the scope of work that may arise from range of patent transactions, all of which the group handles for such renowned clients as FedEx Corporation, Toshiba Corporation and Google. The team is headed up by specialist Jeffrey Jacobstein and Cory Bell who leads the PTAB sub-team, both are based at the Boston office. Bell and Jacobstein lead alongside Boston-based managing partner Erika Harmon Arner who has a focus on PTAB and federal-level appeal cases and Anand Sharma who splits her time between both Boston and Reston. Among the team are an array of IP and tech experts, with attorneys to note in DC being Adriana Burgy who is experienced handling litigation in the chemical, pharma and biotech industry sectors; ’great mentor’ Aaron Parker, Mark Feldstein and associate Gracie Mills . On the West Coast, Aaron Capron in Palo Alto has expertise handling post-grant proceedings pertaining to electronics, telecoms and software-based tech. Arpita Bhattacharyya stands out at the same office. Senior counsel Thomas Irving retired in March 2023.
Testimonials
Collated independently by Legal 500 research team.
‘Great collaboration and communication skills. We meet regularly to talk about our needs and they always provide great guidance and are patient with questions.’
‘Aaron Parker has a huge amount of experience in all areas including prosecution and is a great mentor to my team. Daniel Jordan has excellent attention-to-detail and provides careful explanation of patent-related matters to my team in ways we can understand.'
‘Outstanding, commercially-focused legal advice. Finnegan's team that works with me on prosecution, clearance and assertion matters also bring a unique combination of technical skills, product knowledge and patent enforcement requirements that result in better crafted and more defendable and enforceable patents.’
‘The standout partner is Karthik Kumar while standout associates are Colin Kreutzer, Abhay Watwe, Kai Rajan, Stephanie Ham and Samir Ismail.’
‘The team made major efforts to master background materials. They made sure we broadly understood how we could strengthen our patent portfolio, explaining some nuances that were new to us. Having lawyers who also had extensive medicinal chemistry experience eliminated the need for some intermediaries and gave us confidence that we were getting outstanding guidance.'
'The team was sensitive to timelines and were efficient in addressing our needs. They treated us with respect and provided a first-rate service. This is in contrast to the previous firm that handled our IP that didn't have the same knowledge of chemistry and did not take us as seriously because we an early stage company.'
‘David Weingarten is outstanding! His recommendations are well thought-out, clear, concise, and strategic. He is an experienced medicinal chemist as well as an outstanding lawyer, and his experience in working on chemistry issues with both large pharma and small biotechs gives him a perspective beyond that of most IP lawyers.'
'David Weingarten's demeanor is calm and reassuring. He is a pleasure to work with.’
Key clients
- Advanced Drainage Systems, Inc. (ADS)
- Alibaba Group
- Archer Aviation, Inc.
- ASML Netherlands B.V.
- AstraZeneca Group
- BMW
- Caterpillar, Inc.
- Coupang Corporation
- Eli Lilly and Company
- FedEx Corporation
- FIS
- Intuitive Surgical, Inc.
- Novartis International AG
- Samsung Electronics Co., Ltd.
- Toshiba Corporation
- Vertex Pharmaceuticals
- Wipro Limited
Work highlights
- Advising Alibaba on patent drafting and prosecution in cutting-edge technologies such as quantum computing, AI, video processing, blockchain, neural network processing units, and other tech.
- The PTAB upheld one of Bausch’s patents covering the plecanitide active pharmaceutical ingredient, finding that Mylan failed to prove that the patent was unpatentable as obvious.
- Handling high-stakes drafting, prosecuting, portfolio management, and strategic advising, including patentability, freedom-to-operate, and patent term extension considerations on worldwide patent portfolios covering several different and commercially important drugs.
Lawyers
Practice head
The lawyer(s) leading their teams.
Jeffrey Jacobstein, Cory Bell, Erika Harmon Arner, Anand Sharma