- Complex Commercial and Business Litigation
- Consumer Products Practice
- Due Diligence in IP Acquisitions
- Ex Parte Reexaminations
- General Litigation
- Inter Partes Review
- Invalidity Opinions
- IP Transactional
- Non-infringement 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
- Transfers, Mergers, Acquisitions, Bankruptcies and Securitizations
- Unfair Competition and False Advertising Litigation
- Automotive Technology
- Computer Science & Software
- Electrical Engineering & Electronics
- Internet & E-Commerce
- Mechanical Engineering
- Pharmaceuticals & Pharmaceutical Formulation
- Polymer & Materials Science
- Semiconductor Devices & Processing Methods
- 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, 2000
- U.S Patent and Trademark Office, 2000
- U.S. District Court, District of Massachusetts, 1997
- Commonwealth of Massachusetts, 1997
- State of Connecticut, 1997
Western New England School of Law, J.D., 1997
Northeastern University, B.S., Mechanical Engineering, 1993
- Pi Tau Sigma
- International Mechanical Engineering Honor Society
- Adjunct Professor, University of Connecticut School of Law
Charles F. O'Brien
Charlie O'Brien is the Chair of Cantor Colburn’s intellectual property (IP) Transactional Group. He concentrates his transactional practice on the exploitation, transfer and licensing of technology. Charlie has extensive experience in all aspects of complex IP licensing, including the preparation and negotiation of patent license agreements, software license agreements, joint development agreements, trademark license agreements, material transfer agreements, joint marketing and promotion agreements, and the like. Charlie is also a member of Cantor Colburn’s Litigation Department and has extensive experience in litigating IP related actions, including patent infringement actions and contractual disputes regarding IP rights. These skills provide him with useful and sometimes critical insight for his clients into issues and conflicts that can arise in IP transactional matters. This allows him to address these potential issues and conflicts early on at the transactional stage.
Partner, 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
- 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.
- June 30, 2021
The recent U.S. Supreme Court opinion in Minerva Surgical, Inc. v. Hologic, Inc., et al. upholds the centuries-old doctrine of assignor estoppel while simultaneously clarifying the boundaries of the doctrine’s application. Minerva may impact how businesses develop and implement their strategies to perfect ownership of their intellectual property. Cantor Colburn's Client Alert discusses what this means to you.
- November 17, 2016
Cantor Colburn is the founding sponsor of the Innovation Summit, now in its tenth year.
- 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.
- Corporate CounselOctober 2013
Cantor Colburn was nationally ranked for patent litigation by Corporate Counsel magazine in its October 2013 issue. Cantor Colburn’s dedicated team of litigation attorneys have decades of experience in presenting technically complex matters for trial in front of judges and juries. A partner participates in every facet of the case, bringing results that count for the client. And at each phase of the litigation, Cantor Colburn seeks practical strategies to achieve a prompt, efficient resolution of the dispute.
- The Connecticut Law Tribune, Vol. 37, No. 16April 18, 2011
- November 2, 2019Connection Convention Center, Hartford, CT
Cantor Colburn is a proud sponsor of the 2019 Connecticut Children's Gala. Co-Managing Partner Michael Cantor and Partner Charles O'Brien will attend the gala on November 2, 2019
at the Connecticut Convention Center.
Nursing is central to the high-quality, patient and family care experience at Connecticut Children's. Money raised will provide extraordinary support for the nurses and their innovative research and ensure a strong future for nursing at Connecticut Children's.
- October 9, 2019West Hartford, Connecticut
- June 6, 2019Sacred Heart University, Fairfield, Connecticut
Cantor Colburn is proud to sponsor 2019 ScaleUP CT on June 6, 2019 at Sacred Heart University in Fairfield, Connecticut. Presented by the Connecticut Technology Council, ScaleUP CT is designed to support companies that are beyond the startup phase. ScaleUP CT is an event built to educate and invigorate the leaders of Connecticut's growing tech-oriented companies. Now in its third year, the event will support companies in the tech sector at every stage of their growth and development. Co-managing partner Michael Cantor is on the CTC board of directors and will be a part of the program.
- April 18, 2019Hartford, Connecticut
Cantor Colburn is proud to sponsor the Boys & Girls Club of Hartford's 2019 GREAT Futures Celebration on April 18, 2019 at the Connecticut Convention Center in Hartford, Connecticut.
- March 22, 2019New York City
Cantor Colburn is proud to sponsor the New York Intellectual Property Law Association's 97th Annual Dinner in Honor of the Federal Judiciary on March 22, 2019. The firm is a longtime sponsor of the Judges' Dinner.
- January 30, 2019Tampa, Florida
- December 11, 2018New Haven, Connecticut
- November 13, 2018
Charlie O'Brien and David Bomzer will present "What Non-IP Attorneys and Business Professionals Need to Know About IP Transactions," with West LegalEdcenter, a Thomson Reuters Webinar. This session will provide attorneys and business professionals with an overview of the basic categories of intellectual property and describe the various structures of typical IP transitions.
- November 7, 2018Simsbury, Connecticut
- November 3, 2018The Society Room, Hartford
Cantor Colburn is proud to be a Magic Moments Sponsor of the Nutmeg Big Brothers Big Sisters, Start Something Big Gala being held at The Society Room at 6:00PM
- October 30, 2018Fairfield, Connecticut
Cantor Colburn is proud to sponsor ScaleUP CT on October 30, 2018 in Fairfield, Connecticut. Presented by the Connecticut Technology Council, ScaleUP CT is designed to support companies that are beyond the startup phase. ScaleUP CT is a half-day event built to educate and invigorate the leaders of Connecticut's growing companies.
- October 14, 2018Boston, Massachusetts
The LES (Licensing Executives Society) Annual Meeting takes place October 14-17, 2018 in Boston. Cantor Colburn's Transactional Practice Group assists clients with sophisticated IP-related transactions.
- May 22, 2018New Britain, Connecticut
- March 23, 2018New York City
Cantor Colburn is proud to sponsor the New York Intellectual Property Law Association's 96th Annual Dinner in Honor of the Federal Judiciary on March 23, 2018. The firm is a longtime sponsor of the Judges' Dinner.
- March 14, 2018East Hartford, Connecticut
- January 31, 2018New Haven, Connecticut
The Connecticut Intellectual Property Law Association (CIPLA) presents the workshop, “How IP Motivates Investors and Helps Price Drugs” on Wednesday, January 31, 2018 at the Graduate Club in New Haven, which includes a pre-event workshop for investors, entrepreneurs and attorneys.
- January 9, 2018Hartford, Connecticut
Hartford Mayor Luke Bronin will speak at the MetroHartford Alliance Rising Star Breakfast on January 9 in Hartford.
- November 14, 2017UConn Farmington, Farmington, Connecticut
CURE, BioscienceClubhouseCT, and the UConn Technology Incubation Program present "Lessons in Herding Cats: Strategic Opportunities for Life Science Companies" on November 14 at the Grossman Auditorium, Cell & Genome Sciences Building at UConn Farmington.
- 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.
- April 22, 2017Hartford, Connecticut
- March 31, 2017New York, New York
- November 17, 2016Hartford, Connecticut
The Innovation Summit is the largest networking event for Launch, Growth and Proven companies, featuring workshops, Lunch with an Angel, Company Showcase, and more! Perfect for entrepreneurs, businesses, venture capitalists, angel investors, and members of the public. Cantor Colburn is the founding sponsor of this event.
- October 23, 2016Vancouver, British Columbia, Canada
- November 10, 2015Hartford, Connecticut
Cantor Colburn is proud to sponsor the Innovation Summit, presented by the Connecticut Technology Council.
- Webinar: What’s the Deal? What In-House Counsel Need to Know About Intellectual Property TransactionsAugust 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
American Bar Association
Connecticut Bar Association
Federal Circuit Bar Association
Intellectual Property Owners Association (IPO)
- IP Licensing Committee
- Open Source Committee
Licensing Executives Society
Board of Directors, Connecticut Invention Convention