Brendan E. Clark

Partner

Cleveland
T +1.216.861.6488
F +1.216.696.0740

Overview

Brendan Clark’s practice focuses on intellectual property (IP) and technology law. He concentrates on patent and trademark matters, as well as cases involving copyrights and a variety of technology issues.

Drawing on his knowledge of today’s information economy, Brendan helps clients identify and implement effective solutions to increase return on investment in their intellectual property and technology assets. He provides support throughout the lifecycle of IP assets, utilizing his extensive experience in procurement, assertion and defense, and transaction diligence.

Select Experience

Procurement
  • Counsels clients to identify valuable intellectual property, and then develop and implement strategies to protect and exploit that IP for tangible benefits.
Litigation
  • Develop strategies to assert client patents and trademarks when faced with infringement and defend against accusations of patent and trademark infringement.
Transactions
  • Advise on intellectual property considerations in mergers and acquisitions with values between $2M and $700M.
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Experience

Procurement
  • Counsels clients to identify valuable intellectual property, and then develop and implement strategies to protect and exploit that IP for tangible benefits.
  • Led patent harvest sessions with a financial services industry leader to identify over a dozen inventions being developed or implemented and secure protection to increase the client’s ability to protect its innovation.
  • Managed and prosecuted a patent portfolio for a diversified software company, including handling enforcement and defense considerations and a patent sale to a Fortune 50 business.
  • Conducted intellectual property audits with startups and expanding businesses to ensure comprehensive protection for their creative efforts.
  • Helped software clients develop patent portfolios by carefully tracking and advising on Patent Office guidance relating to subject matter eligibility.
  • Assisted a global electrical client in filing a record number of patent applications before implementation of first-to-file provisions under the America Invents Act.
  • Provide clients with strategic counsel regarding defense and outdoor products, drawing on military experience and knowledge of chasing game and fish.
Litigation
  • Develop strategies to assert client patents and trademarks when faced with infringement and defend against accusations of patent and trademark infringement.
  • Obtained a restraining order and favorable settlement for a media client in a lawsuit involving trademark infringement, cybersquatting and unfair competition claims.
  • Defended against assertions of patent and trademark claims directed to electronic cigarettes.
  • Defended against assertion of software patents involving client in a group of serial lawsuits filed in two different districts by the same plaintiff.
  • Asserted client trademarks and copyrights against infringing competitor in porous paving and stormwater management industry.
  • Opined on clients’ freedom to operate and risks concerning possible infringement or invalidity of patents in a variety of industries including nicotine vaporizers, industrial antistatic containers, financial services software, and additive manufacturing.
  • Represented various clients in multiple industries, including motorsports, surgical component, e-payment system and corporate wellness, in opposition and cancellation proceedings before the Trademark Trial and Appeal Board (TTAB).
  • Handled critical discovery issues, claim construction briefing, and motion practice during client’s assertion of electronic trading patents.
  • Defended clients accused of infringing patents in technology spaces, including building materials, waste derived fuel, and e-commerce.
  • Negotiated settlements for clients involved in patent, trademark, and software licensing disputes.
  • Managed technical issues and expert reports for lawsuit involving software companies.
Transactions
  • Advise on intellectual property considerations in mergers and acquisitions with values between $2M and $700M.
  • Organized and led teams to develop strong consulting agreements for clients developing software with a multinational team of employees and vendors.
  • Prepared a licensing agreement to allow third parties affiliated to a waste management company to leverage the client's branding, trademark and service capabilities.
  • Negotiated a licensing agreement with large non-practicing entity to avoid assertion of its patents.
  • Drafted agreements protecting clients’ intellectual property during joint development projects and engagements with contractors or consultants.
  • Conducted intellectual property diligence for numerous client acquisitions in industries such as nutritional supplements, industrial cutting tools, and software.

Recognitions and Memberships

Recognitions

  • The Legal 500 USA (2021)
    • Recommended for Patents: Prosecution (including re-examination and post-grant proceedings)

Memberships

  • Cleveland Metropolitan Bar Association
  • Cleveland IP Law Association
    • Trademark and Unfair Competition Committee Chair (2019)
    • Patent Committee Co-Chair (2020 to present)
  • Kathleen M. O'Malley American Inn of Court
  • PTAB Bar Association

Community

  • Marine Corps Scholarship Foundation, Cleveland Committee: Co-Chair (2015 to 2019)
  • Autism Society of Greater Cleveland: Board Member (2015 to 2019)
  • National Marine Corps Business Network, Cleveland Chapter
    • Officer (2017 to present)
    • President (2015 to 2017)

Military Service

  • U.S. Marine Corps Reserve, Infantry Officer (2011 to present)
    • Navy and Marine Corps Achievement Medal
    • Selected Marine Corps Reserve and Armed Forces Reserve medals

Admissions

  • U.S. Court of Appeals, Federal Circuit
  • U.S. District Court, Northern District of Ohio
  • U.S. District Court, Southern District of Ohio
  • U.S. District Court, District of Colorado
  • U.S. Patent and Trademark Office, Registration No. 67,691
  • Ohio

Education

  • J.D., Case Western Reserve University School of Law, 2009
  • B.S., General Engineering, University of Illinois, 2006
  • U.S. Marine Corps Command and Staff College, (2021 to present)

Blog

In The Blogs

Previous Next
IP Intelligence: Insight on Intellectual Property
Upcoming Federal Circuit Decision Presents Opportunity for Clarification of Patentable Subject Matter
By Brendan E. Clark
February 25, 2016
Since Alice,[1] consistently defining the bounds of statutory subject matter in computer arts confounds even the most experienced attorneys. E-commerce software combining visual elements of multiple parties’ websites is patent eligible,[2]...
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