Rory Pheiffer works with clients to develop patent portfolios, domestically and abroad, that align with their business goals. He also counsels clients on patent opinion and product clearance matters, IP due diligence issues on the buyer and seller side, license negotiations, and trademark portfolio growth and enforcement in conjunction with building the client’s brand.
OVERVIEW
Rory P. Pheiffer
Partner
OVERVIEW
Rory P. Pheiffer
Partner
Rory Pheiffer works with clients to develop patent portfolios, domestically and abroad, that align with their business goals. He also counsels clients on patent opinion and product clearance matters, IP due diligence issues on the buyer and seller side, license negotiations, and trademark portfolio growth and enforcement in conjunction with building the client’s brand.
- OVERVIEW
- EXPERIENCE
- EXPERIENCE
- Presentations
- Publications
- INSIGHTS AND EVENTS
OVERVIEW
Clients rely on Rory’s technical knowledge, which he honed while earning a degree in mechanical engineering from MIT, to protect inventions across a diverse area of technologies and fields, including: 3D printing, aircraft, biotechnology, cleantech, consumer products, digital cameras, electric vehicles, electronics and lighting, fluid dynamic applications, medical devices, robotics, software and mobile applications, thermovoltaics, and a variety of other mechanical and electrical-mechanical systems.
Rory has proven to be particularly adept at building out large patent portfolios for clients in the medical device field, including for: anastomotic and occlusion devices; bone plates and adhesives; electrochemical meters and cells; gastric bands and bypass procedures; hydrocephalus valves; ligament repair devices and procedures; surgical staplers and clip appliers; nucleic acid analysis devices and methods; photodynamic therapy; spinal implants, including anchors, rods, cages, cross-connectors, and instrument to insert the same; sutures, suture anchors, and related surgical methods; tissue cutting and sealing devices; and trocars, retractors, and seal elements.
These skills translate to a number of other industries, which Rory leverages for his client’s benefits. For example, he is actively counseling clients on building out portfolios of inventions related to aircraft, clean energy, 3D printing, fluid dynamic applications and robotics, among others. In conjunction with the same, he uses expedited patent prosecution strategies to help clients obtain patents in less than a year (when possible).
He also works with clients to grow and enforce their worldwide trademark portfolios in conjunction with their product releases. Rory has been named a leading trademark lawyer in World Trademark Review’s “WTR 1000” for the past four years, and he has been cited in the review for his "wealth of knowledge, " "excellent prosecution advice," and ability to "break things down in a manner that makes them simple to understand and take action on."
His trademark experience also stems from running the MIT trademark portfolio when he worked at the MIT Technology Licensing Office, and by working with dozens of clients in the food and beverage, jewelry, consumer products, automotive, and instrumentation and calibration industries during his 14-plus years in private practice.
Rory is a leader both in the firm and in the community. He is particularly proud to have served as president of the Boston Patent Law Association (BPLA) in 2018, one of the oldest, continuously active IP-based law associations in the country, and have instituted many improvements for the membership and IP community during his eight-year tenure on the BPLA Board of Governors. He has been published more than 90 times on IP-related topics, and spoken or moderated more than 20 panels.
When he is not focused on IP matters, he devotes significant time to Greater Boston Legal Services (GBLS) to help raise funds to support low-income clients in need of legal representation.
Professional and Community Involvement
Past president, former member of Board of Governors (8 years), Boston Patent Law Association (BPLA)
Member, Boston Bar Association (BBA)
Member, Greater Boston Legal Services (GBLS) Corporation, GBLS Development Committee
Secretary, IPO Next Generation Leaders Committee
Guest lecturer, Suffolk University Law School
Mentor, MIT Venture Mentoring Service (VMS)
Honors
World Trademark Review, 1000 “The World’s Leading Trademark Professionals” for Massachusetts, 2018-2021
Massachusetts Super Lawyers, 2021, Rising Star, 2013-2020
Boston Business Journal, 40 Under 40, 2018
GBLS, “Outstanding Contributions to Legal Services for the Poor” Awards, 2011 and 2013
BBA Public Interest Leadership Program (PILP)
EXPERIENCE
EXPERIENCE
- Drafting a patent application for a bike storage solution for contestants of American Inventor that was patented and successfully licensed to a Fortune 500 company
- Successfully negotiating a license for a child safety lock to a leading child safety company
- Conducting IP due diligence analyses of the patent portfolios of small medical device companies for a Fortune 100 company prior to investments by the Fortune 100 company
- Conducting IP due diligence analyses of a patent portfolio related to prefabricated panels and frames for use in building multi-story structures, and completing freedom to operate analysis related to the same
- Drafting substantive motions, claim charts, expert reports, formulating deposition strategies, and conducting 30(b)(6) depositions for a patent litigation related to software
- Served as patent counsel to a market-defining provider of fundraiser enablement solutions powered by artificial intelligence, in connection with a $21 million investment from a leading investment firm focusing on high-growth enterprise software companies
- Represented a developer of high-performance composites in its joint venture with the automotive headliner and specialty industrial fabrics business of a global provider of innovative technical fabric solutions
- Served as trademark counsel to a major U.S. snack brand in its acquisition by an emerging healthy snacking platform and the leading air-dried meat snack company in the country
These matters occurred prior to joining Barnes & Thornburg.
Presentations
- 2021 IPO Spring Summit, April 20, 2021
- Co-presenter, Patent Prosecution, MIT TLO Speaker Series, Jan. 21, 2021
- Identification of Goods and Services in Trademark Applications, Strafford Webinar, Sept. 3, 2020
These presentations occurred prior to joining Barnes & Thornburg.
Publications
- Co-author, “How to Keep Your Disclosure from Becoming Prior Art,” World Intellectual Property Review, Aug. 23, 2018
- MediaPost, “Trademark Considerations When Building a Brand,” The Marketing Insider, May 25, 2018
- Quoted, “Patent Bar Gives Proposed Local Rule Positive Reviews,” Mass Lawyers Weekly, Feb. 8, 2018
- “10 Reasons to Use a Continuation Patent Application,” Law 360, Sept. 21, 2017
- “Five Readily Available Programmes to Expedite US Patent Prosecution,” Intellectual Property Magazine, July 7, 2016
- “Supreme Court Ruling on at Least Five Patent-Related Cases," IP Frontline, April 13, 2016
- Co-author, “Actual Notice Requirement Presents Challenge for Collecting Pre-Issuance Damages,” IP Litigator, March/April 2016
- “Evaluating the Effectiveness of Third Party Preissuance Submissions,” IP Frontline, Nov. 6, 2015
- Co-author, “Paths to Get a Patent Approved More Quickly,” Intellectual Property & Technology Law Journal, March 2015
- Co-author, “4 Paths to Faster Patent Prosecution at the USPTO,” Law 360, Oct. 29, 2014
- Quoted, “Where a Budweiser Isn’t Allowed to Be a Budweiser,” Time.com, Jan. 27, 2014
- Comments on Proposed Changes to Implement Micro Entity Status for Paying Patent Fees, in Response to Request for Comments at 77 Fed. Reg. 31806 (May 30, 2012), Boston Patent Law Association Comments on Federal Register Proposed Rules, July 27, 2012
- “Victory for Biotech: Federal Circuit Tightens the Standard for Proving Inequitable Conduct Defense in Patent Infringement Cases,” BioWorld Perspectives, July 21, 2013
- “Choosing the Best Post-Patent Proceeding from the Patent Owner and Patent Challenger Perspectives” (prepared in support of presentations at AIPLA 2013 Mid-Winter Institute on Jan. 30, 2013), American Intellectual Property Law Association (AIPLA), Dec. 20, 2012
- “Business Torts & Unfair Competition News & Developments, A Shift in Jurisdiction Based on Internet Presence?,” American Bar Association Section of Litigation, Sept. 8, 2011
- “Tightening the Standard for Proving Inequitable Conduct in Patent Cases,” Mass High Tech, July 22, 2011
- Boston Patent Law Association Brief of Amicus Curiae, Therasense, Inc. and Abbott Laboratories v. Becton, Dickinson and Company and Nova Biomedical Corporation, and Bayer Healthcare LLC, Aug. 2, 2010
- Citation of References in Light of McKesson Information Solutions, Inc. v. Bridge Medical, Inc., Boston Patent Law Association Newsletter, April 2008
These publications occurred prior to joining Barnes & Thornburg.
INSIGHTS AND EVENTS
