Brian M. McGuire

Bio

Brian M. McGuire’s practice focuses on procurement and enforcement of intellectual property rights, including patent prosecution, post-grant patent practice (reissue, reexam, inter parties disputes, interference practice) the preparation of patent infringement, validity and freedom-to-operate opinions, intellectual property due diligence, litigation, and strategic counseling on intellectual property matters. Mr. McGuire has developed global patent strategies for companies of all sizes that coordinate all aspects of prosecution, licensing, and litigation to meet business goals, for example:

• Developing a global patent strategy and negotiating partnership agreements for a publicly traded e-commerce corporation.
• Drafting and procuring a global patent portfolio for billion dollar publicly owned SaaS fleet management company.
• Guiding ready-to-license patent procurement for the Computer Science department of a prestigious university.
• Monitoring competitive patent portfolio and formulated product design and patent litigation response strategies for a highly competitive multi-billion dollar financial services and media company.
• Coordinating patent prosecution, inter partes review, and litigation centering on an actively enforced patent.

Over the past decade Mr. McGuire has drafted, prosecuted, and procured global patent portfolios of over 700 patents and patent applications for a wide range of technologies, including:

• Computer hardware, software, and network architecture for complex specialized computer systems
• Quantum Dot photoconductors
• Industrial machine and engineered fabrics (papermaking, nonwovens)
• Composites (including 2-D and 3D woven composites)
• Medical devices
• Telecommunications (cellular access standards, systems, devices, networking and architecture)
• Imaging devices
• Clean/Environmental technology (Smart Grid, hydrogen fuel cells, biomass and biofuels, Intelligent Energy Devices)
• Optics and microscopy
• Door systems, locking mechanisms

Mr. McGuire obtained his Bachelor’s degree at St. John’s College, routinely identified as among the U.S.’s best colleges, and crowned by Newsweek as the “most rigorous college or university in America.” Mr. McGuire credits this education for his ability to deeply engage and interact with inventors and businesses to address technological and legal matters as an integrated whole. “By engaging original sources,” he explains, “you learn from the great minds and inventors in their own words, proofs and experiments. I learned geometry from Euclid, classical physics and calculus from Newton, electromagnetism from Faraday and Maxwell, general and special relativity from Einstein, genetics from Franklin, Watson and Crick, and Quantum Physics from Heisenberg and Bohr. As a Patent Attorney, I continue learning new technological advances and discoveries from innovators and inventors in their own words and translate that into the legal protection they need.”

Education

• Quinnipac University School of Law, Hamden, CT
  Juris Doctor, cum laude, 2002
  • Distinguished Academic Achievement Awards: Intellectual Property and Constitutional Law
  • President: Quinnipiac University Intellectual Property Law Society
  • Liaison: Yale Law and Technology Society
  • Patent Volunteer: The Enterprise Center at Yale
• St John’s College, Annapolis, MD / Santa Fe, NM
  Bachelor of Arts, 1995

Admissions / Affiliations

• Connecticut State Bar, Admitted November, 2002
• New York State Bar, Admitted March, 2005
• Registered Patent Attorney, USPTO, Reg. No. 55,445, Admitted December, 2003
• Member, American Intellectual Property Law Association
• Member, New York Intellectual Property Law Association
• Member, Connecticut Intellectual Property Law Association

Publications

• Author, “Where Patents and Standards Collide in Smart Grid” Greentech Media, September 28, 2010
• Author, “Clean and Green Intellectual Property Due Diligence: Growing Green Investments” greentechmedia, August 30, 2010.
• Co-Author, “Commentary regarding decision in Bilski from a biotech perspective,” Journal of Commercial Biotechnology, 2010.
• Co-Author, “United States Supreme Court Rules on Patentability of Business Methods,” FLH News Alert, July 1, 2010
• Co-Author, “U.S. Patent Office Implements Green Technology Pilot Program — Green Patent Applications on the Fast-Track,” FLH News Alert, December 2009
• Author, “Antitrust Impacts of Patent Ownership in Standard Setting Organizations.” The IP Litigator, March/April 2008. Vol. 14 #2. Aspen Publishers
• Author, “Third Circuit Rules Patentee’s FRAND Promises to SDO Actionable Under Antitrust Law.” AIPLA Antitrust News, October 17, 2007
• Author, “Rambus v. Rambus: Comparing the Federal Circuit and the FTC Decisions on a Patentee’s Participation in Standard Setting Organizations,” AIPLA Antitrust News, January 2007
• Author, “The Who, What, When, Where, and Why of Marking Patents,” IP News, December, 2006
• Co-author, “Injunctive Relief in US Patent Practice,” Journal of Intellectual Property Law & Practice, October 3, 2006
• Co-editor of Dickstein Shapiro’s Intellectual Property newsletter, IP News, 2006-2008