Brian O'Shaughnessy

Biography

Brian, immediate past president of the Licensing Executives Society (USA and Canada), Inc. (LES), is an internationally recognized authority in licensing and commercial transactions involving intellectual property rights. With his extensive licensing experience, he assists clients in resolving disputes at all stages and as a consulting and testifying expert witness. He represents clients of all sizes in proceedings before the U.S. Patent and Trademark Office, including contested proceedings before the USPTO Patent Trial and Appeal Board (interferences, Inter Partes Reviews and Post Grant Reviews), as well as contested matters in federal court and the International Trade Commission. Brian also works with life sciences companies in lifecycle management strategies and in bringing and resolving Hatch-Waxman litigation. His wide-ranging experience affords a diverse perspective and creative solutions to intellectual property management, licensing, enforcement and risk avoidance. He works with innovators to develop cost-effective strategies for protecting their intellectual property and in reducing exposure to liability for infringement.

His involvement in LES, a non-profit, non-partisan professional society devoted to education, standards development, public policy advocacy and professional networking in the development and commercialization of intellectual property, spans several decades and includes service on its Board of Trustees since 2007. As a board member, he served as regional vice president – U.S.A., with principal responsibility for the society’s public policy positions and advocacy, including congressional outreach. He is a longstanding contributor to LES Education, including trustee for education and as an editor, author and faculty member of its Professional Development Series of education programs. For over a decade, Brian has served LES as an international delegate to LES International, the global network of LES national and regional societies.

Brian takes a holistic approach to his clients’ needs – looking at how a patent will be used to derive the maximum strategic value. He views a patent as the beginning, not the end of a relationship with his clients, who appreciate his respect of their hard work.

He has been acknowledged as among the Strategy 300 World’s Leading IP Strategists and among the World's Leading Patent and Technology Licensing Lawyers by Intellectual Asset Management Magazine. In 2013, he was awarded the Outstanding Alumnus Award by his alma mater, Rochester Institute of Technology, and in 2005, he was awarded the RIT College of Science Distinguished Alumnus Award. The Outstanding Alumnus award recognizes outstanding dedication and service to the university, and the Distinguished Alumnus Award recognizes laudable professional and/or community achievement. Brian continues to serve his alma mater on the Executive Committee of its Board of Trustees.

In 2016, Brian was called on to testify before the U.S. Senate Committee on Small Business and Entrepreneurship to discuss changes to the U.S. Patent System and how they impact small businesses.

Education

  • Syracuse University College of Law  (J.D., 1986)
  • Rochester Institute of Technology  (M.S., 1984)
    • Chemistry
  • Rochester Institute of Technology  (B.S., 1981)
    • Chemistry

Bar Admissions

  • District of Columbia
  • Virginia
  • Illinois
  • North Carolina
  • U.S. Patent & Trademark Office

Court Admissions

  • U.S. Supreme Court
  • U.S. Court of Appeals for the Federal Circuit
  • U.S. Court of Appeals for the Fourth Circuit
  • U.S. Court of Appeals for the District of Columbia Circuit
  • U.S. District Court for the Eastern District of Virginia
  • U.S. District Court for the Northern District of Illinois
  • U.S. District Court for the Western District of North Carolina
  • U.S. District Court for the Middle District of North Carolina

Affiliations/Memberships

  • Licensing Executives Society
    • President and chair of the board (2016 - present)
    • President-elect (2015 - 2016) 
    • Regional vice president, USA (2011 - 2015)
    • Board of Trustees (2007 - present) 
  • D.C. Bar Intellectual Property Section, Steering Committee (2013 - 2016)
  • American Intellectual Property Law Association
  • Intellectual Property Owners Association
  • Rochester Institute of Technology
    • Board of Trustees (2004 - present)
    • Executive Committee
    • Student Life Committee, chair (2011 - present)
  • Rochester Institute of Technology
    • Alumni Association Board of Directors (1994 - 2016) 
    • Board, president & chair (2005 - 2009)
    • Membership Committee, chair (2009 - 2013)

Distinctions

  • IAM Strategy 300: The World’s Leading IP Strategists (2016)
  • IAM 1000: The World’s Leading Patent Practitioners (2012 - 2016)
  • IAM 250: The World's Leading Patent and Technology Licensing Lawyers (2010, 2011)
  • Outstanding Alumnus, Rochester Institute of Technology (2013)
  • Distinguished Alumnus, Rochester Institute of Technology, College of Science (2005)