Rex W. Miller II

Rex is a partner in the Vorys Columbus office and a member of the intellectual property group.  His practice is focused on all aspects of intellectual property protection and licensing, including patents, trademark, copyright, trade secrets, as well as intellectual property litigation.  He also has extensive experience in structuring technology transactions, such patent and technology licenses, software licenses, joint development agreements, and technology services and outsourcing agreements.  In addition, Rex has been loaned to multiple clients to support their in-house legal teams for extended periods.

Rex assists companies with developing policies to protect intellectual property, including the protection of trade secrets, invention disclosure policies, non-competition, confidentiality, and non-solicitation policies and agreements for employees and third parties.  In addition, Rex has experience in evaluating and counseling companies concerning intellectual property rights acquired or divested in mergers and acquisitions, and in counseling and negotiating on behalf of clients for the transfer of intellectual property rights, including assignments and licenses.

Rex uses his experience to help companies build valuable and strategic IP portfolios both domestically and internationally.  During his career, Rex has written and prosecuted patents across the spectrum of the electrical and mechanical arts, including lithium batteries and battery charging systems; diagnostic systems in the transportation industry; locomotive engine systems; optical control systems used in steel manufacturing; medical diagnostics and monitoring systems; real time data processing; mobile apps; secure transaction systems; assorted digital electronics devices and consumer products; medical devices; and mechanical fasters and fastening system tools for multiple industries.

Rex’s patent and trademark procurement experience is complemented by his experience in intellectual property litigation.  Rex has represented both intellectual property owners and accused infringers in district court litigation, in Patent Office proceedings (including post-grant inter partes reviews), and at the International Trade Commission.

Rex regularly prepares and negotiates the entire range of end-user software license agreements, as well as contracts for software and systems development, information technology consulting, and systems implementation and customization.  Rex helps companies secure and protect the intellectual property rights implicated in the transaction, mitigate risk, and properly address data security and privacy concerns. 

Career highlights include:

• Assisting corporate clients in negotiating a wide variety of SaaS and cloud-based solution contracts supporting multiple business functions, including analytics and tracking solutions relative to clients’ websites and mobile applications, human resources, finance, and compliance and security solutions
• Drafting template agreements for major retail clients, including both short-form and long-form master services agreements, hosting agreements, and consulting agreements, and created a playbook including instructions regarding the proper use of such template agreements
• Assisting a major healthcare services company in negotiating the terms with a wide range of software, hosting, telecommunications and managed services providers
• Structuring and negotiating for a corporate client a combined technology licensing agreement and equipment lease to protect proprietary manufacturing technology
• Assisting a chemical manufacturing company with creating a template supply agreement, purchase agreement, distribution agreement and sales agent agreements
• Assisting a major retail client with negotiating digital (including mobile) advertising, promotional and loyalty agreements, such as advertising agency agreements, digital insertion orders, and influencer, spokesperson, promotional event and appearance agreements

Rex has a technical background in electrical engineering and is experienced with multiple technologies including: electronics, telecommunications, software, consumer products, medical devices, rechargeable batteries and steel manufacturing.

Prior to law school, Rex worked as an operations program manager for Teradyne, Inc., in Boston, Massachusetts.

Rex received his J.D. summa cum laude from The Ohio State University Moritz College of Law, where he served as the managing editor of the Ohio State Law Journal.  He received a master’s of business administration from the Boston College Carroll School of Management.  He also received both a bachelor’s and master’s of electrical engineering from Cornell University.  Prior to law school, Rex worked as an operations program manager for Teradyne, Inc., in Boston, Massachusetts.

Honors & Recognitions

Columbus CEO, Best Lawyers, Intellectual Property and Patent, 2022

Ohio Super Lawyers Rising Stars, Intellectual Property, 2012-2019

Professional & Community Activities

Intellectual Property Owners Association, Member, 2017