Welcome to
McCloskeyIP
Intellectual property strategy, analysis, and
advocacy for
companies investors law firms

For Companies

Invention and brand protection and enforcement, early dispute resolution, licensing, risk analysis, fractional GC and IP counsel.

I help companies with newly-developed technology understand the patent system, its general costs and timing, and other options for protection. I help identify and define your inventions and understand the potential scope of protection in view of what is already in the public domain, so that you can make informed and unbiased decisions about how to prioritize your resources. Where appropriate, I can help refer you to patent prosecution counsel who best aligns with your technology area and budget. Where appropriate, I can act as your in-house IP counsel, ensuring your patent applications remain aligned with your business strategy, budget, and exclusivity expectations.

New companies often put off trademark strategy until a later growth stage thinking of trademarks only as an offensive consideration. Adopting a trademark strategy early—well before public launch—is a cost-effective way to avoid legal expenses and the possibility of having to re-brand after you have begun building brand equity. I help companies minimize trademark infringement risk and secure and enforce strong company and brand names.

I help clients understand the risk and potential liability associated with infringement demands, cease-and-desist letters, and patent infringement cases filed “out of the blue,” efficiently negotiate acceptable resolutions in many cases without the expense of hiring litigation counsel. As a litigator with extensive experience assessing the strength of infringement allegations and settling pre-suit litigation threats in both patent and trademark matters, I prioritize finding a cost-effective resolution of these matters with minimal impact to your business.

I advise companies on IP licensing, joint development, services, and other IP-heavy transactions, helping define and negotiate terms, and drafting and negotiating the agreements memorialize those terms while maximizing protection of client interests.

Understanding and navigating third-party IP infringement risk is critical to product and brand development. I help you understand and internalize various IP infringement risks and mitigation strategies.

In-house IP counsels play a critical role in developing a strong legal culture, spotting issues, handling day-to-day legal questions, and directing and managing the budget of outside counsel. Many early-stage companies have a need for this expertise, but on less than an FTE basis. A fractional general counsel or IP counsel can be a cost-effective temporary solution during earlier stages of growth.

For Investors

Patent portfolio assessment trademark and brand protection assessment, IP litigation assessment, IP due diligence.

I help investors understand the scope and quality of a target’s IP portfolio. When an investment thesis assumes a certain degree of patent exclusivity, I help test those assumptions. Critical to this process is understanding what is “nice to know,” what is “need to know,” and what is irrelevant to the value of the deal. This allows me to tailor the analysis to your business priorities and deliver the best value, whether a top-level overview or a detailed analysis and current and predicted patent scope.

When investing in a consumer goods company or where the target’s brand is a major asset or basis for future value, it is critical to understand not only the strength, exclusivity, and third-party risk in present jurisdictions, but the ability to expand into others. Similarly, in industries with significant counterfeiting issues, it is important to understand the company’s strategy and risk level, particularly in future markets.

With many years experience as an IP litigator, I can provide clients with a thorough understanding of their targets’ ongoing patent and other IP litigation and context for validating a target’s assessment of potential risk.

Whether as a part of an abbreviated and targeted early evaluation or as part of your corporate transaction diligence team, I have extensive experience interviewing targets, managing request lists, reviewing data rooms, and reporting on a full range of IP issues.

For Law Firms

M&A IP specialist support, IP licensing support, patent litigation support, patent prosecution partnering.

As part of your corporate transaction diligence team, I have extensive experience on the buy side interviewing targets, managing request lists, reviewing data rooms, and reporting on a full range of IP issues. On the sell side, I can help your clients get organized, identify any red flags and help develop and execute disclosure strategy, handle requests from buy side counsel, and negotiate IP-specific deal terms.

I can support your clients with expertise in IP licensing, joint development, services, and other IP-heavy transactions, helping define and negotiate terms, and drafting and negotiating the agreements memorialize those terms while maximizing protection of client interests.

Whether you have an experienced litigation practice handling your first patent case or a patent litigator in crunch time, I can help with patent litigation-specific phases of litigation like (in)validity/(non-)infringement contentions, claim contruction, expert discovery, and damages.

I help busy patent prosecution practices by counseling your clients in early stages of development, helping them identify and define inventions and generate fulsome invention disclosures that your associates and agents can run with. Once filed, I can act as in-house patent counsel for those of your clients without, developing a response strategy that your firm can execute, and working with clients to collect or generate supporting data as necessary.

Law Office of Brian P. McCloskey

[email protected]

Bar Admissions: New York
District Court Admissions: S.D.N.Y., E.D.N.Y
Registered Patent Attorney, Reg. No. 48,255

About

I help clients cut through the complexities of intellectual property matters and identify the key information relevant to their decision-making. By empowering my clients with a thorough understanding of their risks and decision points leads to client decision-making consistent with their company’s risk appetite.

With nearly 15 year at top-tier law firms representing hundreds of clients from tech and life sciences giants to AI and SaaS startups to venture capital and PE investors and deep technical experience in dozens of industries, I get up to speed on your specific technology thoroughly and efficiently. The best top-level advice is distilled from the details found in the weeds of your specific industry and technology.

As chief IP counsel at a global consumer goods company undertaking a major cost-reduction transformation, I am experienced in counseling clients on a risk-based approach to IP challenges and relying on practical solutions that keep the company’s IP asset value, risk exposure, and bottom line in sharp focus.

As a former patent and commercial litigator, I can help you make sense of IP threats, and I have a track record of cutting through the bluster and resolving threatened or early-stage IP litigation before incurring the cost of litigation counsel.

For angel and venture investors for which the target’s IP is a significant component of the investment thesis, I help uncover issues that are critical to your business objectives and work with you to define a right-size approach to diligence based on deal size and your risk tolerance.

For law firms, I partner with you to add value for your clients. Whether you need IP expertise on a deal, help with a patent litigation, IP licensing assistance, or assistance counseling your early-stage clients on IP matters, I can support you at the highest standard of professionalism and quality of work.

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