Víctor M. Rodríguez-Reyes

Víctor M. Rodríguez-Reyes is a Member Attorney with our Intellectual Property and Health Law & Insurance practice groups. He counsels clients in all areas of intellectual property, is a Registered Patent Attorney before the United States Patent and Trademark Office, and does patent litigation and patent drafting and prosecution.

Victor represents clients, plaintiffs and defendants, in patent infringement cases in several United States District Courts. He focuses on the technical aspects of patent infringement, invalidity, and claim construction. He also represents clients before the Patent Trial and Appeal Board in trial proceedings including Inter Partes Reexaminations.

He litigated one of the first cases brought under the Puerto Rico Trade Secret Act, obtaining a preliminary injunction, which was confirmed by the Puerto Rico Court of Appeals.

Prior to joining Ferraiuoli, Victor worked as a legal intern in the Intellectual Property Litigation Department of Clifford Chance in Barcelona, Spain. He participated in the preparation of oral arguments for patent infringement and unfair competition hearings and performed infringement analysis of pharmaceutical patents. Before entering the Intellectual Property field, Victor worked in the health and insurance industries as In–house Counsel for Medical Card System, Inc. and as Compliance Officer at the Puerto Rico branch of the Office of Public Health Preparedness and Response. His experience included litigation of administrative proceedings before the Commissioner of Insurance, the Puerto Rico Health Insurance Administration, and the Centers for Medicare and Medicaid Services. He has actively participated in high-profile negotiations involving hospitals, software companies, and government entities, and the bidding processes for public health plan contracts.

Victor is also a Chemist and performed undergraduate research at Argonne National Laboratory and at the University of Puerto Rico, Río Piedras Campus in the fields of atmospheric chemistry and physical chemistry.

Get to know Víctor

Why Ferraiuoli?

My interest in bridging the gap between my legal and scientific knowledge required that I join a unique law firm that would support my professional aspirations. Ferraiuoli was the best choice for me because it is in a class of its own in dealing with and advising clients regarding transactions and disputes related to intellectual property and emerging technologies.

Why do your clients come to you?

We pride ourselves in contributing to the growth of Puerto Rico’s economy by helping entrepreneurs evolve and innovate. Our clients understand that we are interested in their business ventures, not just their legal problems. We endeavor to provide coherent and consistent legal advice that will support their methods and goals.

Looking forward (on the legal or business front), what you see?

I see a positive outlook for enterprises willing to embrace change. By counseling clients on protecting their trade secrets and developing patent and trademark portfolios we help them achieve growth through innovation.

Representative Cases or Transactions

  • Quality Water Service and Distribution Corp. v. Caribbean Water Coolers, Inc., et al., Puerto Rico Appellate Court (August 28, 2012) PKLCE201200503, 2012 PR App. LEXIS 2852.
  • Master Lock Company LLC, v. Toledo & Co., Inc., United States District Court, D. Puerto Rico. October 17, 2014 No. 3:13-CV-01658-PAD. 2014 WL 7670530.
  • Toledo & Co., Inc., v. Master Lock Company LLC, Case IPR2014-01542 (Patent Tr. & App. Bd.).
  • Toledo & Co., Inc., v. Master Lock Company LLC, Case IPR2014-01540 (Patent Tr. & App. Bd.).
  • Canatelo LLC v. Trendnet, Inc., 3:13-cv-01093-PAD (D.Puerto Rico).

view all

Speaking Engagements

  • Protection and Commercialization of Inventions, Continuing Education Course, PRChem 2013, Río Grande, PR, July 2013.
  • Processes and Costs of Patenting Products and Services, Seventh Forum for Inventors and Entrepreneurs, San Juan, PR, October 2012.
  • Patenting Procedures and Policy, Professional Development Program of External Resources: Complying with Scientific Research, San Juan, PR, May, 2012.
  • Co-speaker, Effects of the America Invents Act on Academia, Ninth Educational Congress Sistema Universitario Ana G. Mendez, San Juan, PR, November, 2011.

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Publications

  • How I Learned to Stop Worrying and Love the Bomb: a Personal Look at the IPR’s Strangelove, Pulse blog, May 2015.
  • Drink it Up: Rums of Puerto Rico’s New Marketing Campaign, Marca Sur International, January 28, 2015.
  • Appeals Court discusses nature of franchise agreements, World Trademark Review, October 20, 2014.
  • A Trade Dress Does Not a Designation of Origin Make, Marca Sur International, August 10, 2014.
  • Court of Appeals issues decision on certification marks; World Trademark Review, June 19, 2014.
  • The Theory of Immoral Infringement, Marca Sur International, April 30, 2014.
  • Patents and the Search for Economic Growth, Marca Sur International, November 6, 2013.
  • Protecting Your Secrets from the Free Riders, Marca Sur International, April 24, 2013.
  • All IP is Not Created Equal: Protection v. Enforcement of IP Rights, Marca Sur International, March 9, 2012.
  • The New Order in Authors´ Rights, Marca Sur International, January 1, 2012.
  • Copyrights and Syncretism: Trouble in Mixed Jurisdictions, Marca Sur International, November 21, 2011.
  • Co-author: The Income and Consumption Tax Reform in the United States, Journal of Social Economics and Business, Cooperative Institute for Public Economics and Financial Law, Barcelona, Spain, February 3, 2006, pp. 49-60.

view all

Get to know Víctor

Why Ferraiuoli?

My interest in bridging the gap between my legal and scientific knowledge required that I join a unique law firm that would support my professional aspirations. Ferraiuoli was the best choice for me because it is in a class of its own in dealing with and advising clients regarding transactions and disputes related to intellectual property and emerging technologies.

Why do your clients come to you?

We pride ourselves in contributing to the growth of Puerto Rico’s economy by helping entrepreneurs evolve and innovate. Our clients understand that we are interested in their business ventures, not just their legal problems. We endeavor to provide coherent and consistent legal advice that will support their methods and goals.

Looking forward (on the legal or business front), what you see?

I see a positive outlook for enterprises willing to embrace change. By counseling clients on protecting their trade secrets and developing patent and trademark portfolios we help them achieve growth through innovation.

Representative Cases or Transactions

  • Quality Water Service and Distribution Corp. v. Caribbean Water Coolers, Inc., et al., Puerto Rico Appellate Court (August 28, 2012) PKLCE201200503, 2012 PR App. LEXIS 2852.
  • Master Lock Company LLC, v. Toledo & Co., Inc., United States District Court, D. Puerto Rico. October 17, 2014 No. 3:13-CV-01658-PAD. 2014 WL 7670530.
  • Toledo & Co., Inc., v. Master Lock Company LLC, Case IPR2014-01542 (Patent Tr. & App. Bd.).
  • Toledo & Co., Inc., v. Master Lock Company LLC, Case IPR2014-01540 (Patent Tr. & App. Bd.).
  • Canatelo LLC v. Trendnet, Inc., 3:13-cv-01093-PAD (D.Puerto Rico).

view all

Speaking Engagements

  • Protection and Commercialization of Inventions, Continuing Education Course, PRChem 2013, Río Grande, PR, July 2013.
  • Processes and Costs of Patenting Products and Services, Seventh Forum for Inventors and Entrepreneurs, San Juan, PR, October 2012.
  • Patenting Procedures and Policy, Professional Development Program of External Resources: Complying with Scientific Research, San Juan, PR, May, 2012.
  • Co-speaker, Effects of the America Invents Act on Academia, Ninth Educational Congress Sistema Universitario Ana G. Mendez, San Juan, PR, November, 2011.

view all

Publications

  • How I Learned to Stop Worrying and Love the Bomb: a Personal Look at the IPR’s Strangelove, Pulse blog, May 2015.
  • Drink it Up: Rums of Puerto Rico’s New Marketing Campaign, Marca Sur International, January 28, 2015.
  • Appeals Court discusses nature of franchise agreements, World Trademark Review, October 20, 2014.
  • A Trade Dress Does Not a Designation of Origin Make, Marca Sur International, August 10, 2014.
  • Court of Appeals issues decision on certification marks; World Trademark Review, June 19, 2014.
  • The Theory of Immoral Infringement, Marca Sur International, April 30, 2014.
  • Patents and the Search for Economic Growth, Marca Sur International, November 6, 2013.
  • Protecting Your Secrets from the Free Riders, Marca Sur International, April 24, 2013.
  • All IP is Not Created Equal: Protection v. Enforcement of IP Rights, Marca Sur International, March 9, 2012.
  • The New Order in Authors´ Rights, Marca Sur International, January 1, 2012.
  • Copyrights and Syncretism: Trouble in Mixed Jurisdictions, Marca Sur International, November 21, 2011.
  • Co-author: The Income and Consumption Tax Reform in the United States, Journal of Social Economics and Business, Cooperative Institute for Public Economics and Financial Law, Barcelona, Spain, February 3, 2006, pp. 49-60.

view all