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Brian O’Shaughnessy

is a recognized authority in intellectual property law and technology licensing. He is a Partner, and head of the IP Licensing & Acquisitions Group of Dinsmore & Shohl LLP, Washington, DC. He is a Past President of the Licensing Executives Society, USA and Canada; and continues to serve LES USA & Canada as Sr. Vice President for Public Policy. He has also served the global society, LES International, as Co-chair of the LESI External Relations Committee, coordinating public policy positions among LESI’s 33 national and regional societies. He has been retained as an expert witness in IP and licensing matters by the U.S. Treasury Department, the U.S. Department of Justice, and by various private parties. He has appeared in IP-related briefings on Capitol Hill, and has testified before the U.S. Senate Committee on Small Business and Entrepreneurship on how the America Invents Act has affected small business and IP-related transactions.

For more information or to contact Mr. O’Shaughnessy please visit his firm profile page.

Recent Articles by Brian O’Shaughnessy

The Air Force Wants Your IP – Don’t Expect it Back

The U.S. Air Force last year announced revisions to its weapons procurement policy that will have the unintended effect of reducing its access to groundbreaking technology, thereby posing a threat to national security.  Specifically, the Air Force said it would demand greater ownership of corresponding intellectual property (IP) rights. This ill-conceived policy will strip innovators of valuable property rights, and thereby diminish incentives for innovation and discourage collaboration with the military, especially the Air Force.

Licensing and the Art of Preventive Negotiation: Minimizing Unintended Consequences

The art of preventive negotiation in a license agreement is not practiced solely by means of pen and paper (or word processor); but instead, starts much earlier. The care and attention devoted to the earliest stages of a deal are highly worthwhile. A friend and fellow LES member is fond of saying: “No deal without a meal.” This is emblematic of the fact that a license agreement is no more than an attempt to put in writing what the parties have agreed they are desirous of achieving, and how they propose allocating rights and responsibilities to achieve those ends. Trust is an essential component, and this is built up over time… The term sheet should be focused only on the major terms of consequence. It should not descend to tactics and operations or else it runs the risk of invading the rightful province of detailed negotiation and drafting of the agreement itself, and a needless redundancy. Tactical details are for later, when the investment is clearly justified. Likewise, premature focus on the tactical raises the risk that negotiation of the ultimate agreement becomes a rehash of the term sheet, which risks not only duplication of effort, but inconsistency, misunderstanding, and deviation from the strategic objectives underlying the alliance.

Ruminations on Licensing: IP as a Private Property Right

An exclusive right is more than a mere right of remuneration – it is the right to control the use and disposition of one’s property, and to deny others access to it. Without the fundamental attribute of exclusivity, we lurch toward a system of compulsory licensing, or a private right of individuals to take another’s property on the promise of mere monetary compensation. Under our Constitution, and particularly the Fifth Amendment, or the Takings Clause, even the government does not possess that right except that it be for some demonstrable public – rather than private — use. Thus, to be true to the express language of our Constitution, and respectful of the limits imposed on the Fifth Amendment, the rights inherent in intellectual property necessarily must include a right to exclude others from the enjoyment of that property.

On the Next USPTO Director, Patents as a Private Property Right

Above all, LES recommends appointing a Director dedicated to protecting intellectual property, generally, and patents in particular, as the private property right our nation’s founders envisioned. The founders saw great value in rewarding individuals who toil to bring forth from commonly accessible resources useful products and processes by granting to those individuals an enforceable property right. They recognized that such a property right would, in the fullness of time, work a substantial benefit to the public by encouraging innovation and disclosure. We must honor that philosophy. It contributed substantially to America’s rapid ascendancy from agrarian economy to industrial powerhouse, and can be traced to America’s first patent act of 1792. In affording that private property right, we reward and empower the archetypal American innovator, the individual daring to risk all to bring forth the next big thing, and thereby challenge market incumbents who benefit from stasis and the status quo.

Past Events with Brian O’Shaughnessy