Professionals
Practice Areas
- Complex Commercial and Business Litigation
- Copyright Litigation
- Due Diligence in IP Acquisitions
- Ex Parte Reexaminations
- Inter Partes Review
- International
- Invalidity Opinions
- IP Transactional
- Licensing
- Litigation
- Non-infringement Opinions
- Opinions
- Patent Landscaping and Risk Analysis
- Patent Litigation
- Patentability Opinions
- Post Grant Practice
- Post-Grant Review
- Right to Practice Opinions
- Strategic IP Portfolio Development and Management
- Technology Transfer
- Trade Secret Litigation
- Trademark and Copyright Litigation
- Trademark Litigation
- Transfers, Mergers, Acquisitions, Bankruptcies and Securitizations
- Unfair Competition and False Advertising Litigation
Technologies
- Automotive Technology
- Biotechnology
- Computer and Systems Engineering
- Electrical Engineering & Electronics
- Energy
- Internet & E-Commerce
- Mechanical Engineering
- Nanotechnology
- Optics
- Pharmaceuticals & Pharmaceutical Formulation
- Polymer & Materials Science
- Semiconductor Devices & Processing Methods
- Telecommunications
Honors
Admissions
- U.S Court of Appeals for the Ninth Circuit, 2001
- U.S Court of Appeals for the Federal Circuit, 2001
- U.S. District Court, District of Connecticut, 2000U.S Patent and Trademark Office, 2000
- U.S. District Court, District of Massachusetts, 1997
- Commonwealth of Massachusetts, 1997
- State of Connecticut, 1997
Education
Western New England School of Law, J.D., 1997
Northeastern University, B.S., Mechanical Engineering, 1993
- Pi Tau Sigma
- International Mechanical Engineering Honor Society
Charles O'Brien
チャールズ・オブライエン
パートナー兼知財取引グループ長
チャーリー・オブライエンは、キャンター・コルバーン法律事務所の知財取引グループ長です。技術の活用、移転、ライセンシングなどの取引業務に注力しております。また、複雑な知財ライセンシング、例えば、特許ライセンス契約書、ソフトウェアライセンス契約、共同開発契約書、商標ライセンス契約書、材料委譲契約書、共同マーケティングおよびプロモーション契約書などの準備および交渉を含む、知財ライセンシングの全ての面において豊富な経験を有しております。また、キャンター・コルバーン法律事務所の訴訟部門のメンバーでもあり、特許侵害訴訟や知的財産権に関する契約上の争議などを含む知財関連訴訟に関する経験も豊富です。
Experience Highlights
Partner and IP Transactional Practice Group Leader, Cantor Colburn LLP, 2006-present
Associate, Cantor Colburn LLP, 1999-2006
Associate, Pelligrini, Seeley, Ryan and Blakesley, Springfield, MA, 1997-1999
Law Clerk, Pelligrini, Seeley, Ryan and Blakesley, Springfield, MA, 1995-1997
News
- Best Lawyers
Cantor Colburn is proud to announce that the following attorneys are recognized as 2025 Best Lawyers: Christopher C. Boehm, David Bomzer, Alison Caless, Michael A. Cantor, Michelle P. Ciotola, Philmore H. Colburn II, Steven M. Coyle, Nicholas A. Geiger, Charles F. O'Brien, Roberta L. Pelletier, Leah M. Reimer, Ph.D., David E. Rodrigues, Ph.D., Michael J. Rye, Bryan D. Zerhusen, Ph.D., Susan M. Zerull. Michael Cantor is a Best Lawyer Lawyer of the Year.
On April 23, 2024, the FTC voted to finalize the “Non-Compete Clause Rule." Subject to exceptions, the Rule generally states that entering into a non-compete clause with a worker after the Rule’s effective date, including senior executives, is an unfair method of competition. Read Cantor Colburn's Client Alert about this issue. UPDATE
- February 19, 2023
AUTM’s Annual Meeting is the largest gathering of technology transfer professionals. This year's meeting on February 19-21, 2023, in Austin is a chance to connect, and gain insights from world-class speakers and panels from more than 90 educational sessions. Cantor Colburn's team at the meeting is Anne Maxwell, Ph.D. Bryan Zerhusen, Ph.D., Charlie O'Brien and Nicholas Herrel, Ph.D.
- August 20, 2021
In August 2021, the United States Federal Circuit Court of Appeals held in Omni Medsci vs. Apple Inc. that a university IP policy and employment agreement providing that patents developed by an employee “shall be the property of” the university does not present an automatic assignment of future patent rights, and therefore is not sufficient to effectuate the assignment of legal title to the university. This case is a reminder that proper assignment language in a contract must be utilized to effectuate the desired transfer of intellectual property, and without it, you may not own what you think you own.
- Law360June 23, 2015
On Monday, June 22, 2015, the U.S. Supreme Court issued a ruling in Kimble v. Marvel Enterprises that leaves intact a 50-year-old rule barring royalty agreements that continue after a patent expires. Cantor Colburn partner Charles O'Brien is among the experts who comment in IP Law360.
- The Hartford CourantMay 2014
Cantor Colburn’s Charles O’Brien, a partner at the intellectual property law firm, was quoted in a recent Hartford Courant news article about “patent trolls.”
- Connecticut Law TribuneMarch 24, 2014
The Connecticut Invention Convention honored Cantor Colburn partner Charles O'Brien as he stepped down from its board of directors after four years as a member.
- The Connecticut Law Tribune, Vol. 37, No. 16April 18, 2011
Events
- November 7, 2023CLE webinar
Charlie O'Brien discusses Invalidity Opinions in Patent Litigation: Shielding Against Liability and Reducing Exposure to Enhanced Damages, Attorney-Client Privilege Implications, a live 90-minute premium CLE video webinar with interactive Q&A, presented by Strafford. This CLE course will provide patent counsel with guidance on using invalidity opinions in defense of patent infringement claims. The panel will discuss the issue of waiver of the attorney-client privilege and other factors when considering invalidity opinions. The panel will provide best practices for obtaining and using invalidity opinions.
- February 23, 2023CLE webinar
Charlie O'Brien will be a panelist for the webinar "Evaluating and Acquiring Patent Portfolios: Key Considerations: Structuring the Transaction, Conducting Due Diligence, Drafting and Negotiating Key Provisions" on February 23, 2023, presented by Strafford. This CLE webinar will guide patent counsel on the key considerations for evaluating and acquiring patent portfolios and provide insight into strategic considerations and transaction structures as well as the key issues to consider when conducting patent portfolio due diligence.
- March 25, 2022New York City
The 100th Dinner in Honor of the Federal Judiciary will be held on March 25, 2022 in New York City.
- March 14, 2018East Hartford, Connecticut
Charles O'Brien and Taylor Coon will present an introductory workshop on IP basics to the Greater Hartford Chapter of SCORE on March 14, 2018 from 10AM-12PM in East Hartford, Connecticut.
- June 20, 2017
Charlie O'Brien presented a webinar on Artifex Software, Inc. v. Hancom, Inc. to the Intellectual Property Owners Association's Open Source Committee.
- October 23, 2016Vancouver, British Columbia, Canada
The Licensing Executives Annual Meeting takes place on October 23-26, 2016 in Vancouver, BC, Canada, and will host more than 1,000 industry leaders from more than 800 companies. Cantor Colburn partner Charlie O'Brien is a presenter.
- November 10, 2015Hartford, Connecticut
Cantor Colburn is proud to sponsor the Innovation Summit, presented by the Connecticut Technology Council.
- August 19, 2015
Charles O'Brien presented a webinar for the California State Bar Intellectual Property Section, entitled, "What’s the Deal? What In-House Counsel Need to Know About Intellectual Property Transactions" on August 19, 2015.
- July 28, 2015Fairfield University, Fairfield, Connecticut
Partner Charles O'Brien presented "How to Value Your Innovation" to members of the Connecticut Inventors Association on July 28, 2015 at Fairfield University.
Mr. O'Brien chairs the firm's IP Transactional Practice Group and concentrates his transactional practice on the exploitation, transfer and licensing of technology, and IP rights through various IP related transactions. He has extensive experience in all aspects of complex IP licensing.
- Protecting Your Client’s Intellectual Property; Due Diligence and Post-Closing Best PracticesNovember 3, 2010presented at the Central Connecticut Paralegal Association CLE Seminar, Glastonbury, Connecticut
- Guest Speaker, Connecticut Optics and Photonics Association, 2007
Professional Affiliations
American Bar Association
Connecticut Bar Association
Federal Circuit Bar Association
Intellectual Property Owners Association
- IP Licensing Committee
- Open Source Committee
Licensing Executives Society
SEMI
Community/Civic Involvement
Former Board of Directors, Connecticut Invention Convention