Rex A. Donnelly

How Rex Helps Clients

Rex delivers a well-rounded practice with significant experience in every facet of Intellectual Property (IP) law. From devising comprehensive and cost-effective protection strategies to procuring rights that have value, to licensing, enforcing and defending those rights, Rex has provided trusted guidance to clients large and small for two decades.

Having served as Delaware counsel through trial and as lead, local, consulting, or coordinating counsel for IP litigation throughout the U.S. and around the globe, Rex never lets his clients miss an opportunity to find a business solution to their legal challenges. His hands-on approach to drafting and prosecuting patents, trademarks, and copyrights helps to deliver a broad scope of protection ready to withstand any challenge.

Before practicing law, Rex spent nearly ten years as an engineer and environmental consultant for a Fortune 15 chemical corporation. This background uniquely positions him to understand the corporate environment, the context in which technology, branding, and creativity support business, and the importance practical legal advice plays in helping a business achieve its goals. Never losing sight of his mechanical and chemical process engineering roots, Rex collaborates with clients to ensure the broadest possible coverage for their inventions and brands.

Transactions

Rex’s transactional practice reflects a mix of trademark-oriented licenses and agreements, as well as settlement agreements and dispute resolutions. He has also helped clients evaluate and document intellectual property rights pursuant to transfers arising from mergers and acquisitions.

Rex has drafted and assisted clients in negotiating license agreements to settle patent litigation, including licenses creatively addressing tricky issues related to most-favored-licensee clauses and assignability provisions; coexistence agreements for resolving trademark oppositions and cancellations or for securing allowance of trademark registrations, including agreements with worldwide scope resolving disputes in multiple jurisdictions; confidentiality and non-disclosure agreements relating to trade secrets and pending patent applications; and assignment agreements relating to trademark registrations, patents, and/or copyrights.  Rex also helps clients navigate open source licenses in connection with M&A, development of best practices, and negotiation with licensors.

Copyright

Rex has extensive experience in prosecuting copyright applications with the U.S. Copyright Office and negotiating the intricacies of copyright protection for various works. These include books, pamphlets, catalogs, typeface fonts, technical drawings, works of graphic arts, software, websites, and product configurations. He is also adept at handling requests for reconsideration of U.S. Copyright Office refusals of registration.

Rex frequently assists clients with the enforcement of rights (including the use of DMCA take-down letters to combat online infringement) and the defense against assertions of rights by others (including collective rights management organizations). Rex also helps clients navigate issues relating to the use of Open Source Software and Software Development Kits. With a strategic approach, he develops protection strategies for innovations that intersect copyright, trademark and design patent rights.

Litigation

Rex has represented clients in patent, trademark, copyright, and unfair competition cases:

• as local counsel in the District of Delaware, including through jury trial;
• as lead counsel in federal courts throughout the United States;
• before the U.S. Trademark Trial and Appeal Board (TTAB);
• before arbitration panels in Uniform Domain-name dispute Resolution Proceedings (UDRP);
• in mediation before magistrate judges and private mediators; and
• throughout the world via coordination with foreign counsel.

Rex’s litigation experience includes asserting and defending patent infringement cases in various fields such as software, business method, pharmaceutical, chemical, and electro-mechanical. He has handled cases involving trademark, copyright, unfair competition, and theft of trade secret cases relating to literary works, online and print catalogs, business names, personalities, trade dress, customer lists and font software.

Patent

Honed through hands-on involvement in the preparation and prosecution of nearly two decades worth of U.S. utility and design patents and their international counterparts, Rex’s patent prosecution experience spans several fields, including medical devices, computer hardware and software, payment cards, transaction processing, imaging, packaging, optics, heat transfer, fluid handling, chemical processing, waste treatment, investment funds, yacht design, and security devices.

Trademark

Rex has had sole or shared responsibility for several thousand foreign and domestic marks from clients' portfolios of all sizes. He devotes a significant percentage of his time to the various aspects of trademark practice, including prosecuting domestic and international trademark registrations, client counseling (as well as the coordination of trademark searches and providing trademark “right-to-register” and “right-to-use” opinions), litigation, and inter partes matters.

His client-focused approach earned Rex recognition as the Delaware recipient of the Client Choice Award for “Intellectual Property – Trademarks” in 2014 and 2015.

Strategy & Risk Management

Rex skillfully navigates the balance between informing clients about potential risks and employing a creative approach to identify strategies that can surmount these challenges and achieve business goals. He believes an attorney’s most important role is not just to identify issues, but to provide legal advice that fosters cost-effective, business-savvy solutions.

Rex’s litigation experience guides his preparation of opinions relating to IP enforcement and defense, including sending and responding to demand letters relating to patents, trademarks, copyrights, trade secrets, and domain names. Leveraging his extensive experience in resolving IP disputes through both negotiated settlements and hard-fought litigation, he brings a realistic and comprehensive evaluation of all alternatives when guiding clients.

What Clients Can Expect

Because you’re busy…

You need someone who will take the time to understand your business, your technology, and the demands of your job – who is dedicated to never sending you a problem without a thoughtful and well-researched recommendation for a solution and who has the experience to deliver results.

Whether you are a C-suite executive, part of an in-house legal team, or just starting a new venture, Rex understands your time is valuable and strives to provide the highest caliber service, on time, in a way that fits your budget and makes you shine.

I am a collaborative problem solver who will first ensure a deep understanding of your technology, your business, and your goals, and then help you find a practical, efficient, and cost-effective solution. 

Proof Points

• Represents universities and leading providers of metal payment cards, mortgage origination, water solutions and technology, and solutions in the fields of printed product packaging, marking, coding, labeling, color measurement and certification.
• Provides comprehensive IP representation in close contact with executives and principals of established and emerging technology companies.
• Served as Delaware counsel through a 5-day jury trial for defendant accused of infringing multiple patents covering software for remote computer monitoring.
• Lead counsel for plaintiff typeface software designer asserting copyright and trademark infringement by multiple manufacturers and retailers of lettering products.
• Lead counsel for plaintiff credit card rewards program operator against former bank and cruise line business partners / trademark licensees in trademark infringement suit relating to use of formerly licensed marks, resolved using court-sponsored ADR.
• Delaware recipient of the Client Choice Award for “Intellectual Property – Trademarks” (2014, 2015).

Outside the Office

Rex enjoys spending time with family, friends, and his dog in Delaware’s beach communities, cooking, touring Virginia’s Wine Country, and fishing the 1000 Islands of the St. Lawrence River.  Rex has also been a loyal (and long-suffering) Philadelphia Eagles fan since childhood.