Brian P. O'Shaughnessy

Brian P. O'Shaughnessy

Brian P. O'Shaughnessy focuses his practice on counseling clients in developing and implementing strategies to protect and respect intellectual property particularly in the areas of organic chemistry, pharmaceuticals and biotechnology.

Brian counsels clients in developing and implementing licensing strategies to enhance corporate competitiveness, and to extract maximum value from intellectual assets. He represents clients in contested matters before the federal courts of the United States, and in administrative proceedings before the US Patent and Trademark Office including patent procurement, post-issuance proceedings, and interferences. He counsels lifescience and health care companies in lifecycle management strategies, and in matters relating to the Hatch-Waxman amendments to the Federal Food Drug and Cosmetic Act. Brian's wide-ranging experience affords a diverse perspective and creative solutions to intellectual property management, enforcement, licensing, and risk avoidance.

Brian's recent representations include:

· Sepracor Inc. v. Breath Ltd. (D.Mass., C.A. No. 06-10043-DPW) (for Sepracor, patent infringement action under Hatch Waxman Act)

· Philip Morris, Inc. v. Star Scientific, Inc. (E.D. Va., 3:02CV466) (for Philip Morris, Inc., seeking declaratory judgment of patent invalidity of USPN 6,202,649)

· Eli Lilly and Co. v. Zenith Goldline Pharmaceuticals, Inc., 2001 U.S. Dist. LEXIS 25246 (S.D. Ind. Oct. 12, 2001) (for Lilly, patent infringement under Hatch Waxman Act, finding defendants to have willfully infringed Lilly's patent and awarding attorney fees)

· Eli Lilly and Co. v. Zenith Goldline Pharmaceuticals, Inc., 58 U.S.P.Q.2d 1543 (S.D. Ind. 2001) (for Lilly, granting Lilly's request to prolong the statutory 30-month stay for approving Zenith's ANDA)

· Eli Lilly and Co. v. Zenith Goldline Pharmaceuticals, Inc., 149 F. Supp.2d 659 (S.D. Ind. 2001) (for Lilly, rendering a decision on Zenith's motion to compel)

· Eli Lilly and Company v. Novo Nordisk of North America, Inc., et al. (for Lilly, patent infringement action re human growth hormone

· Plant Genetic Systems, N.V. v. Dekalb Genetics Corp., 175 F. Supp.2d 246 (D.Conn. 2001) (for Plant Genetics, patent infringement action re transgenic corn)

· Dekalb Genetics Corp. v. Pioneer Hi-Bred Internat'l, Inc., (N.D. Ill., Civ. Action Nos. 96 C 50113, 50240) (for Pioneer, dismissed with prejudice, patent infringement action re transgenic corn)

· Revlon Consumer Products Corporation v. L'Oreal SA, et al. (for L'Oreal, patent infringement action re cosmetics)

· Fisons Corp. v. Health & Medications at Home, Inc., (W.D.N.C., Civ. Action No. ST-C-91-44-MU) (for Fisons, settled)

· Hybritech, Inc. v. Abbott Labs, 4 USPQ2d 1001 (C.D. Calif. 1987) (for Abbott, patent infringement action re monoclonal antibody assays)

Brian is chair of the firm's Chemical Patent Practice Group and is co-chair of the firm's Pharmaceutical Practice Team.

Brian is a longstanding and active member of the Licensing Executives Society (LES), USA & Canada, and serves on its Board of Trustees as Trustee for Education overseeing the development and implementation of its educational programming. Brian has also served LES, USA & Canada as International Delegate to LES International; and since 2001, he has been a faculty member and author of various modules of the LES educational series, Intellectual Asset Management.

Brian was selected as the 2005 Distinguished Alumnus for the Rochester Institute of Technology's College of Science. The award acknowledges professional and/or community achievement.

Brian was a partner with Burns, Doane, Swecker & Mathis, LLP, one of the oldest and most prolific intellectual property law firms in the United States, until its lawyers and other professionals joined Buchanan in 2005.

Publications & Speeches

Alexandria Intellectual Property Attorney Brian O'Shaughnessy Quoted on TTOs in Technology Transfer Tactics
September 3, 2009

Alexandria Intellectual Property Attorney Brian O'Shaughnessy's Appointment to RIT Board of Trustees Noted in Legal Times
April 28, 2009

Buchanan Ingersoll & Rooney Intellectual Property Attorney Brian O'Shaughnessy Elected to RIT's Board of Trustees
April 13, 2009

The Pitfalls of Public Disclosure: Protecting the Fruits of Your Research
Mondaq.com
November 2003

Univ. of Rochester v. Searle: An (Anti-) Inflammatory Decision
10(7) Intellectual Property Today 35
July 2003

Patent Pitfalls Among the Unpredictable Arts
14 Nature Biotechnology 1028
August 1996

The False Inventive Genus: Developing a New Approach for Analyzing the Sufficiency of Patent Disclosure Within the Unpredictable Arts
7 Fordham Intell. Prop., Media & Ent. L.J. 147
1996

What's in GATT for Inventors
4 Today's Chemist At Work 26, American Chemical Society
May 1995

What You Need to Know About Patents
3 Today's Chemist At Work 36, American Chemical Society
June 1994

Substantive Aspects of Patent Litigation, in The Law and Strategy of Biotechnology Patents
Butterworth Heinemann
1994

Patentable Subject Matter, in The Law and Strategy of Biotechnology Patents
Butterworth Heinemann
1994

The Halogenolysis of Organoboranes
16(10) Synthesis 973-76
1993

Simplified Cytochalasins. 1. Synthesis of versatile perhydroisoindolone intermediates
27(24) Tetrahedron. Lett. 2691-94
1986

The Synthesis and Characteristics of Nonsteroidal Antiestrogens Hydroxytamoxifen and N,N-Dimethyl Analog of Nafoxidine
M.S. thesis, Rochester Institute of Technology
1984

Civic & Charitable

Rochester Institute of Technology, Board of Trustees and chair of Alumni Association Board of Directors

Affiliations

American Bar Association

American Intellectual Property Law Association

Association of University Technology Managers

Intellectual Property Owners Association

Board of Trustees, Licensing Executives Society