Patents

Working in close partnership with our clients, we work to understand their business goals, as well as the industry trends and the competitive environment in which they operate.  Our goal is to help build a formidable patent portfolio suited to our clients’ needs.  Whether the objectives are focused on defensive coverage, creating barriers to entry, or building value for a strategic exit, our patent professionals take an aggressive approach and have proven experience to get the job done.

Our team uses pragmatic drafting techniques designed to provide minimal rejections across multiple jurisdictions.  During prosecution, we utilize leading cases and early indicators of patentability to maximize efficiency.  In all technical areas, we focus on using Smart Prosecution™ methodologies and Smart Filing Routes™ to produce pragmatic patent prosecution outcomes.  The result is smart patent spend management for optimized global portfolio management.

We have developed our proprietary PatentlyIntegrated® approach to work with each client’s business, legal, marketing and technical staffs to ensure that intellectual property (IP) asset management plans are built on and around evolving business goals.  This work entails identifying and prioritizing assets with recommendations to license technologies or sell marginal assets to generate revenue, to donate or even abandon assets to reduce costs, and to identify acquisitions to strengthen or expand an existing IP portfolio.  To help serve our clients with assets and needs outside of the U.S., we have nurtured and actively manage a network of highly competent foreign IP counsel who work under similar guiding principles. 

In 2017, Vorys launched PatentlyIntegrated®, a unique system designed to help companies efficiently obtain quality patent assets with efficient spend management.  Our PatentlyIntegrated® technology uses proprietary algorithms to objectively align business goals with patenting activities. PatentlyIntegrated® incorporates competitive intelligence as well as jurisdictional realities in that strategic alignment.  In August 2019, Vorys exclusively licensed PatentlyIntegrated® to Activ8 IP, Inc.

Design patents and utility model patents can often add diversity to IP portfolios, for example, to deter counterfeiters and copycats.  Our team helps clients recognize when and how design patents and utility models can be used to enhance the IP strategy for a given product or market.  Design patents can be especially helpful tools in combatting bad actors in emarketplaces.

Plant patents cover new and unique characteristics of plants and can serve as a higher revenue source by preventing competitors from using the plant.  We work closely with our clients and inventors to procure plant patents strategically, and are sensitive to spend management to ensure outcome tailored to the client’s needs.

For many of our clients, we facilitate invention mining (also called invention harvesting) sessions to help our clients’ innovators conceive of new inventions or identify new inventions already conceived, but not yet articulated or appreciated.  We have found that invention harvesting can be leveraged in the context of active development projects to ensure that valuable project-related IP is duly protected.

PTAB Proceedings: Post-grant inter partes review, post-grant review, covered business method review, and reexamination proceedings before the PTAB are an integral part of how Vorys patent attorneys ensure our clients’ IP objectives and litigation strategies are met.  At Vorys, our substantial trial experience, coupled with our attorneys’ technical knowledge and patent experience, allows our team to provide unparalleled coverage and strategic thinking before the PTAB. 

Patent Litigation: Our attorneys, many of whom hold advanced degrees in chemical, electrical, mechanical and/or computer arts, develop a unique strategy for each case, always considering both the legal and business perspectives in determining the best course of action.  We conduct Markman claim construction hearings, try cases to decision, and represent clients before the U.S. Court of Appeals for the Federal Circuit and the International Trade Commission (ITC).  We have the ability to scale our team to meet the needs of any situation while maintaining sufficient leverage for cost-efficiency.  Our experience in federal courts across the country ensures that we can handle any patent litigation matter for our clients on the plaintiff or defense side.  Further, by working with our in-house eDiscovery and litigation technology team, we are able to streamline the discovery process, lowering risk and cost to the client while insuring greater accuracy and efficiency.

Freedom to Operate: We also help clients manage threats brought by Patent Assertion Entities (PAEs) or direct competitors.  This includes deploying a suite of options from indemnification to licensing or litigation.  Our team uses the latest patent analytics tools to help clients clear products and reduce PAE threats.

Patent Marketplace: We assist clients in efforts to license, sell or acquire patent portfolios.  We have engaged in a number campaigns on behalf of patent owners to license and sell their patent assets.

Patentability Opinions: Our attorneys often conduct patentability searches and produce opinions to help our clients decide whether pursuing patent protection makes sense.  A patentability search is conducted to identify patents and non-patent literature that may affect the patentability of an invention and/or the advisability of seeking patent coverage. 

Clearance Counseling:  We help our clients leverage the best position in their respective markets, including advising on industry patent landscapes and their freedom-to-operate.  We also regularly conduct portfolio reviews, state-of-the-art studies and patent mapping exercises to help our clients understand the competitive landscape in which they are operating.  Through these and other methods, we help our clients navigate competitors’ patent assets, for example, before product offerings, and provide non-infringement, enforceability and invalidity opinions. 

We also routinely address design-around issues, licensing potential, IP contract construction and enforcement, export controls, government contract issues, regulatory issues and pre-litigation strategies. 

Patent Monetization:  We help our clients analyze their patent portfolios to identify and exploit the maximum potential of their patent assets.  We review their business goals to understand business opportunities presented by these assets, create plans to generate revenue through licensing or selling the assets (or divesting a business) and then execute those plans.  We look to increase the value of our clients’ portfolios through additional filings and acquisitions.