Intellectual Property

Our nationally recognized intellectual property (IP) practice helps clients create and defend IP assets in furtherance of their key business goals.  These goals can range from maintaining exclusivity, to building the next iconic brand, to attracting investment.  We understand how a company’s IP assets can drive and support those goals.

Who We Represent

We work with innovative start-ups, multinational corporations, universities, public and private companies, and other IP-driven organizations.  These clients come in all sizes and span a myriad of industries, including chemistry, biosciences, nanotechnology, electrical engineering, food and beverage, medical device, software, artificial intelligence, blockchain, universities and more.  Our clients are domestic, foreign and global. 

Our 360-Degree Approach

IP can be among the most valuable assets a business owns. Nevertheless, a company’s IP can be undermined by internal misappropriation of resources, scattershot efforts for protection and protection strategies that do not support the business’s goals.  Our team has developed an integrated approach, supported with objective proprietary data analysis and Six Sigma tools, to help our clients run and maintain a proactive IP strategy.  This proactive strategy helps our clients obtain and support IP assets that can be leveraged for business advantages and offers optimized handling and spend management.  The insights gathered from our comprehensive analysis educate our approach to litigation and transactions involving IP, such as licensing, venture capital investments and acquisitions, which in turn educate our approach to securing IP protection, resulting in a comprehensive 360-degree approach to IP.

IP Process Improvement Consulting

Our goal is to help our clients improve their integration between IP, research and development and marketing departments to ensure their business goals align with their IP strategies and IP spend targets. 

IP Process Consulting:  We work with our clients to create a connected, integrated and efficient IP ecosystem using optimized tools and resources. 

Our team includes Six Sigma certified professionals experienced in IP operations.  These professionals work with our clients to assess their existing procedures and identify efficiencies that can be obtained through better tools, staffing, processes or partners. 

IP Asset Gap Consulting:  We often tackle these projects by looking at our client’s business unit or a specific product line.  We then assess our client’s business goals for that unit or product, relevant activities (such as make, use and sell), and the current IP assets that relate to that unit or business.  We then analyze the portfolio, and compare that portfolio to competitor portfolios as well as competitor activities to identify gaps in coverage.  We then make recommendations to close those gaps.  We have at our disposal our PatentlyIntegrated® tool as a means to use data to strategically align these goals with jurisdictional realities in addition to competitor activities.

Technology Transactions and Licensing

Leveraging part or all of an IP portfolio can generate revenue streams, open new markets or shut down competitors.  We have advised small entrepreneurs and Fortune 500 corporations in virtually every type of IP-related transaction.  Our team recognizes that well-crafted transactions require a familiarity with the unique issues that technology introduces into a deal.  Our legal and technical experience and our background in the business of utilizing technology and IP assets bring our clients a strategic advantage.  This experience also allows us to deliver thoughtful counsel to our clients to help them anticipate and mitigate risks and build successful relationships. 

• IP Due Diligence: Our deep understanding of varied technologies and IP law allow us to help companies react quickly to any issue that emerges during an IP transaction, to provide thoughtful and accurate answers to investors’ questions, and to craft contract terms that properly allocate risks that can help drive an equitable deal.
• IP Licensing: Our attorneys have represented both licensors and licensees in licensing transactions involving a wide variety of subject matters, including technology, patents, proprietary and open source software, internet applications, brands, trade secrets and media and publications.  We have successfully negotiated multi-million dollar licenses for nationally and internationally known brands in industries as diverse as clothing, food, pet accessories, pharmaceuticals and biotechnology.  Our attorneys have extensive experience in trademark license quality control and have helped brand-owners establish suitable testing and review procedures.  We also assist clients in identifying and profiting from their patent and other IP assets through the development of appropriate licensing strategies and royalty structures.
• Partnering Agreements: We assist clients in developing and reviewing all types of partnering agreements, including distribution and marketing, franchising, co-branding, computer software and networks, joint ventures, outsourcing, technology transfers, publishing and entertainment contracts, among others.
• Software and Big Data Transactions: Our attorneys regularly assist clients in a variety of software and big data transactions, from software development and customization to transfer of software or data by license or sale.  We regularly advise on issues relating to open-source software, inner source software, Software-as-a-Service and privacy laws.
• Agreements: We often negotiate and draft agreements implicating IP rights for clients large and small.  Our team delivers the necessary agreements, including licenses, transfer agreements, non-disclosure and confidentiality agreements, research and development agreements, joint partnership and venture agreements, manufacturing, supply and distribution agreements, funding agreements, and more to help protect the growth and success of our clients’ ventures. 
• Government Contracts: We help clients protect their proprietary information in the context of government-funded projects.  Our attorneys are familiar with the complexities of creating, using and delivering technical data and computer software to government agencies.  We assist clients with strategies for planning for and controlling the creation and preservation of the records needed to demonstrate proprietary rights in data, with the development of "subject inventions," and with compliance with regulations governing the ownership of patent rights in subject inventions.

Our attorneys also advise clients to protect ownership of, and the rights to use, data and information first developed during performance of a procurement contract, cooperative agreement, cooperative research and development agreement (CRADA), and more.  In addition, our attorneys represent clients in disputes arising out of the assertion of limited or restricted rights in technical data, including product designs, drawings and diagrams, test data and methodologies, manufacturing processes and computer software.

The Vorys IP team includes an impressive roster of professionals with advanced degrees and/or technical backgrounds in today’s relevant technologies.  Our technical backgrounds, together with our experience advising domestic and international clients with respect to managing global portfolios, enables us to craft individualized strategies for each client’s business purposes.  We work with clients of all sizes across a myriad of industries, including:

Traditional Energy

Our energy industry patent team includes patent practitioners with relevant technical degrees and experience including petroleum engineers, mechanical engineers, electrical engineers, chemical engineers and chemists (including multiple practitioners with Ph.D. degrees in chemistry), many of whom have decades of patent experience in the area.  Our team has drafted, prosecuted and opined on thousands of patent applications in this space.  We are particularly skilled in upstream technologies, enhanced oil recovery (EOR) technologies, midstream technologies and downstream technologies including refining and specialty chemical and polymer production.  A brief listing of our experience includes:

Upstream Technology Experience:

• Onshore and offshore oil and gas exploration
• Seismic modeling
• Subterranean formation modeling
• Subterranean formation drilling
• Subterranean formation cementing
• Subterranean formation fracturing
• Subterranean formation completion

EOR Technology Experience:

• Onshore secondary and tertiary recovery operations
• Offshore secondary and tertiary recovery operations

Midstream Technology Experience:

• Oil and gas storage
• Pipelines
• Liquefied natural gas operations
• Liquefied petroleum gas operations
• Gas-to-liquids operations

Downstream Technology Experience:

• Fuels
• Lubricants
• Waxes
• Fuels
• Polymers
• Catalysts
• Speciality chemicals
• Paints
• Coatings

Clean and Renewable Energy

Our clean and renewable energy patent team includes patent practitioners with relevant technical degrees and experience including biologists, mechanical engineers, electrical engineers, chemical engineers and chemists.  We provide end-to-end patent counsel, beginning with basic renewable research through technology development and commercialization.  A brief listing of our experience includes:

Renewable Energy Technology Experience:

• Biomass technology
• Solar energy
• Wind energy
• Hydropower
• Tidal energy
• Geothermal energy
• Algae biofuels
• Gas-to-liquid and gas-to-fuels processes
• Fuel cells, batteries
• Carbon capture operations
• Climate change abatement
• Environmental protection

Nanotechnology

The earliest modern discussion of nanotechnology was presented by legendary physicist Richard Feynman in 1959.  Since then, there has been rapid development in the field both theoretically and in the real world, and concomitantly, an acceleration in the rate of patent filings in this area, especially in the last several years.  Our attorneys have extensive experience assisting clients in the acquisition, litigation and licensing of nanotechnology both in novel and established technology areas and applications.  One of our Ph.D. patent agents studied under Nobel Laureate Dr. Richard Smalley at Rice University.  Dr. Smalley received the Nobel Prize in Chemistry for the discovery of a new form of carbon, buckminsterfullerene, also known as buckyballs.  A brief listing of our experience includes:

Nanotechnology Experience:

• Atomic layer deposition
• Carbon nanoparticles
• Metal and metal oxide nanoparticles
• Nanobio and nanomedical technologies
• Nanocapsules
• Composite materials
• Nanoelectronics
• Nanofluidics
• Nanoporous membranes
• Nanoscale devices
• Nanoengineering
• Quantum well infrared photo detectors
• Quantum dots
• Microscopy
• Thin films

Health Care and Life Sciences

Our attorneys and professionals have widespread technical and legal experience in methods and therapies related to the life sciences industry.  Our team has counseled life science clients in the areas of patent portfolio development, licensing, strategic collaborations, due diligence, investments, trade secrets and associated litigation.  We additionally work closely with regulatory counsel in Food and Drug Administration (FDA) matters for human and veterinary drugs, biologics and medical devices.  Our attorneys craft patent strategies to take advantage of Hatch Waxman paragraph IV litigation and protections.  We prepare regulatory notices, certifications and detailed statements, as well as documents for both the 505(b)(1) and 505(b)(2) regulatory pathways for our clients.  We have also have experience submitting Citizen Petitions and other correspondence to the FDA.  We further provide counsel regarding related government agencies, such as the Consumer Product Safety Commission (CPSC) and the U.S. Department of Agriculture (USDA).  In support of non-U.S. matters, we regularly work with trusted counsel regarding foreign drug and medical device protection (e.g., the European Agency for the Evaluation of Medicinal Products).

A brief listing of our experience includes:

Pharmaceutical and Health Care Technology Experience:

• Drug and biologics development
• Nutritional supplements
• Drug and assay manufacturing
• Dentistry
• Diagnostics
• Genomics
• Gene therapies
• Medical devices
• Bioinformatics
• Proteomics
• Vaccines
• Screening assays

Regulatory Experience: 

• Regulatory strategy
• Product development and approvals
• Orange Book patent analyses and opinions
• FDA submission preparations
• Post-approval compliance
• FDA enforcement actions
• Regulatory litigation
• Non-U.S. regulatory support

High Technology

Vorys high technology patent attorneys and agents have a breadth of technical degrees and extensive relevant industry and legal experience.  We help clients navigate through high tech landscapes, carving out protections for their cutting-edge contributions and profiting from their research and development efforts.  Our team has broad experience and formal training in various electronics, software and computer-related technologies.  A brief listing of our experience includes:

High Technology Experience:

• Electronics
• Software
• Computer-related architecture
• Cloud-based services
• Machine learning
• Analog devices
• Antennas and wireless transmission
• Fintech
• Renewable energy
• Digital health care / telemedicine
• Network and data communications
• Internet of things
• Hybrid memory systems and data storage
• Blockchain technology
• Non-Fungible tokes (NFTs)
• Image analysis
• Biometrics
• Sensor systems
• Robotics and control systems
• Semiconductor devices and fabrication
• Space technology, materials and systems

Chemicals

We have a strong bench of chemical attorneys including several Ph.D. chemists in our chemicals industry team.  A brief listing of our experience includes:

Chemicals Experience:

• Biochemistry
• Chemical engineering
• Food and beverage chemistry
• Inorganic chemistry
• Organic chemistry
• Metallurgy
• Recycling, purification and refining
• Pharmaceutical chemistry
• Physical chemistry
• Polymer chemistry
• Coatings
• Paints
• Personal care products
• Cosmetics

Mechanical

Our team includes lawyers and agents with mechanical engineering degrees and experience that help guide our clients in a variety of specific applications.  A brief listing of our experience includes:

Mechanical Experience:

• Automotive
• Aviation
• Commercial building structures
• Residential building structures
• Compressors
• Pumps
• Engines
• Oil and gas tools and equipment
• Heating and cooling systems
• Medical devices
• Renewable energy tools and equipment
• Robotics

Materials Science

Vorys materials science IP patent team has scientific and legal backgrounds to support our clients’ materials science needs and maximize the commercial value of their inventions.  We work with our clients to develop innovative ways to characterize and describe new materials and develop patent portfolios that provide full protection to such new materials.  A brief listing of our experience includes:

Materials Science Experience:

• Polymers and polymer composites
• Metallurgy
• Biomaterials
• Semiconductors
• Integrated circuits
• Optics
• Ceramics
• Nanotechnology
• Photonics
• Fibers and textiles
• Surfaces and interfaces
• Coatings
• Films
• Cosmetics
• Packaging

Additive Manufacturing

Our materials and mechanical engineering teams assist our clients in developing and patenting additive manufacturing equipment, processes, and materials, and have additionally assisted in patenting the resultant object.  A brief listing of our experience includes:

Additive Manufacturing Experience:

• Polymers and polymer composites
• Metallurgy
• Semiconductors
• Ceramics
• Chemistry
• Biochemistry
• Materials science and engineering
• Dyes
• Pigments
• Inks
• Nanotechnology
• Surfaces and interfaces
• Coatings
• Films
• Mechanical and robotics engineering
• Software and design engineering

Aerospace

Our experienced patent attorneys understand the advanced technology needs and the business focus required for prosperity in the aerospace industry.  The aerospace industry branches various scientific disciplines, such as mechanical, electrical, software and more.   A brief listing of our experience includes:

Aerospace Experience:

• Aircraft systems and controls
• Spacecraft systems and controls
• Avionics and navigation systems
• Air cargo handling equipment
• Composite materials
• Fuel cells and batteries
• Geolocating systems and controls
• Mechanical and robotics engineering
• Nanotechnology
• Materials science
• Additive manufacturing
• Navigation systems and controls
• Satellites
• Software and design engineering
• Fluid control valves
• Engines and jet engines
• Unmanned vehicles and drones

Electronics

Electronics and electrical technologies affect the day-to-day lives of millions of people around the world and influence the global economy.  Vorys electrical engineering patent attorneys help clients protect investments made in their most critical electrical technology areas.  A brief listing of our experience includes:

Electronics Experience: 

• Audio systems
• Automotive technologies
• Blockchain
• Cable television technologies
• Circuits
• Communications
• Control systems
• Cryptocurrencies
• Data recording technologies
• Displays
• Electro-mechanical systems
• Electronics
• Image processing
• Lasers
• Magnetic technologies
• Metaverse
• Navigation technologies
• Non-Fungible Tokens (NFTs)
• Geolocating technologies
• Optics
• Printing technologies
• Radio technologies
• Robotics
• Industrial automation
• Satellites
• Semiconductors
• Telephony
• Video game technologies
• Video technologies
• Wired and wireless telecommunications
• Robotics

Automotive and Ground Transportation

Global movement of people and products have never been more prevalent and the need for consumer and business marketplace innovations, including updated features and designs, is ever increasing.  Our automotive and ground transportation patent attorneys have assisted our clients for years in protecting automotive and transportation IP, including the development of patent or other IP assets and protecting or leveraging those assets through monetization or collaborations.  A brief listing of our experience includes:

Automotive and Ground Transportation Experience: 

• Automotive parts, accessories, and systems
• Construction
• Agriculture
• Heavy machinery
• Fleet management
• Logistics
• Motorcycles
• Personal recreation vehicles
• Shipping containers
• Bus parts, accessories and systems
• Train parts, accessories and systems
• Composite materials
• Fuel cells and batteries
• Geolocating systems and controls
• Mechanical and robotics engineering
• Nanotechnology
• Materials science
• Additive manufacturing
• Navigation systems and controls
• Satellites
• Software and design engineering
• Engines

Music and Entertainment

We represent musicians, music publishers, record companies, songwriters, concert producers, television personalities, actors, dancers, ballet companies, authors, playwrights, painters, sculptors, video and board game developers, toymakers, fashion designers, entrepreneurs, institutional clients, sports organizations and Fortune 500 corporations.  Our attorneys negotiate and prepare an array of licensing, distribution, performance, licensing, management, agency, publishing and recording agreements.  A brief listing of our experience includes:

• Music licensing, including synchronization, mechanical and performance licenses
• Consent and release agreements for actors or models
• Talent agreements, including agreements with well-known Hollywood actors, musical artists, reality show performers and Olympic medalists
• Performance agreements for concert series or tours
• Musician/band agreements and establishing corporate structures and other organizational documents for the same
• Music publishers and recording agreements on behalf of the musicians and companies
• Agreements which transfer music composition and sound recordings rights and other intellectual property
• Revenue-sharing agreements among musicians for distribution of proceeds from performance, music licensing and sales
• Website music rights and streaming agreements
• Agreements with world-renowned photographers for their services
• Agreements for the manufacture and distribution of original board games
• Agreements regarding copyright, licensing, and theatrical services for production of an original stage musical
• Consumer terms of service for online music services