John Moetteli – US Patent Attorney and Former JSC NASA Engineer

BIOGRAPHY

For  more than twenty years, John Moetteli has been a practicing patent practitioner/attorney-at-law specialized in intellectual property, licensed before the US and Swiss Patent and Trademark Offices, the European Union Intellectual Property Office and the Liechtenstein Trademark Office. He’s also admitted to practice before the United States Court of Appeals for the Federal Circuit, and the District of Columbia Bar (Washington D.C), as well as the Bucharest Bar. Further, he’s a registered Professional Engineer in Texas, currently on inactive status.

Since 1997, Dr. Moetteli has been based in Europe and has represented famous individuals, luxury watch brands, as well as innovative companies, both small and large, before the US, Swiss, EU, Liechtenstein and International patent and trademark authorities.  In 2002, John founded what later became Da Vinci Partners LLC, owner of the “Da Vinci” brand for legal services in essentially every industrialized country in the World.  Da Vinci Partners LLC counsels primarily European and US clients regarding IP litigation issues and prosecutes patents in the IT, software, business methods, manufacturing process, electro-mechanical, medical device, and sports products fields.

Dr. Moetteli  holds an Engineering degree, a Doctor of Jurisprudence degree, and a Masters in International Management (with emphasis on Doing Business in China). In addition, he’s followed courses on Chinese Patent Law, including co-editing a well-known manual on industrial property. He is also trained in mediation and arbitration through WIPO courses.

His technical specialty is mechanical, IT, software, medical devices, and sports products. He is particularly specialized in preparing freedom to operate, infringement, non infringement, invalidity and unenforceability opinions on US patents, as well as preparing US and International patent and trademark applications. His experience preparing legal opinions has trained him in the ability to objectively assess infringement and validity, all helpful to fair and thoughtful determination in arbitration as well as in providing strategic litigation advice. Knowing where the strengths and weaknesses of a case lie helps in mediation efforts as well.

Dr. Moetteli is a member of the American Intellectual Property Law Association (AIPLA), the International Association for the Protection of Intellectual Property (AIPPI), the Intellectual Property Commission of the International Chamber of Commerce, and elected member of the ICC Swiss Commission of Arbitration and ADR, member of the Licensing Executives Society (LES). He’s also the founder of the North American Attorney’s Association in Geneva, and a member and former member of the managing committee of the Association of International Business Lawyers (AIBL). He’s lectured  at the IMD as part of the “Programme for Executive Development” (PED), at the “Zurich School of Management and Law” (ZHAW), for the Da Vinci School of Intellectual Property, for WIPO (as a WIPO Patent Expert), the European Commission, the Swiss Patent and Trademark Office as well as several Universities in Switzerland and abroad.  He’s published several articles on the subject of intellectual property law as well.

Prior to moving to Switzerland, Dr. Moetteli worked in the intellectual property section of Haynes & Boone LLP, a large general litigation firm with offices in Texas, Washington D.C. and Mexico City. He earned his Doctor of Jurisprudence magna cum laude from the University of Houston Law Center, a highly ranked law school. In his Masters studies, including senior level MBA courses at the University of Houston and University of Houston Clear Lake Schools of Business, he earned perfect marks.

Prior to his experience with Haynes & Boone, Dr. Moetteli worked at NASA’s JSC with astronaut Joe Kerwin, the first medical doctor in space.  There, his responsibilities included technology management and space station systems design. During this time, his work was featured on the Discovery Channel’s Invention Series cable television program sponsored by the Smithsonian Institute.

Dr. Moetteli speaks fluent English, French and German.

EDUCATION AND HONORS:

Doctor of Jurisprudence — University of Houston Law Center (ranked in the top five law schools in the US for Intellectual Property specialty), magna cum laude. Dean’s list.  Annual Fund scholarship recipient. AmJur Awards: Constitutional Law and Contracts II.  Corpus Juris Secundum Award. Highest grade: Int’l Business Transactions, Professional Responsibility, International Law, and Administrative Law.  Member – Order of the Barons and Order of the Coif, well-known honorary legal fraternities.

Master of Arts — International Management Studies (Business Masters with emphasis on challenges of international operations) — University of Texas (Dallas), including MBA programs at the University of Houston School of Business and University of Houston Clear Lake, 4.0 GPA (perfect marks).

Bachelor of Science in Mechanical Engineering — University of Texas (Arlington), cumulative GPA 3.3+, Honor Roll as well as Southern Methodist University; Elected to Tau Beta Pi and Pi Tau Sigma, national engineering honor societies.

Note: employed full-time while attending University, May ’83 through May ’95.

WORK EXPERIENCE:

In Switzerland from Oct. 1, 1997 to the present – first as an IP attorney for Katzarov SA and then Bugnion SA, both in Geneva, and later as managing attorney of Da Vinci Partners LLC, now in Arbon, Switzerland.  John specializes in prosecuting US patent applications and preparing non-infringement, validity, and unenforceability opinions on US patents, thereby helping Europe-based clients assess the risks of entering into the US market, particularly when competitors have patents on similar technology.  He also handles patent and trademark licensing negotiations, as well as prepares, files, and prosecutes patent and trademark applications in various strategically important jurisdictions. In addition, he mediates IP rights disputes.

From 1994 to 1997, John was an IP attorney with Haynes & Boone, L.L.P. (www.haynesboone.com). Here he was responsible for an international oil field exploration company’s international patent docket.  John regularly prepared, filed and prosecuted U.S. and international patent applications in the software, telecommunications, as well as mechanical and electromechanical arts.  He also prepared patentability opinions as well as prepared, filed and prosecuted trademark applications.  Still further, he dealt with copyright, trademark, trade secret and unfair competition issues.

From 1991 to 1996, John worked at Johnson Space Center (JSC), for NASA. Licensed as a US Patent Agent, he finished his tenure at JSC as a Senior Design Engineer, and New Technology Coordinator. At NASA, he was responsible for the design/development of hardware for the International Space Station.  His regular activities included brainstorming, solid modeling, mass and stress analysis, trade studies, presentations to NASA tech monitors and integration teams, and participation in cost and operational studies.   As new technology coordinator, he was responsible for indoctrination of employees in requirements for new technology reporting including writing and filing new technology disclosures with the NASA Patent Department.  He performed patent searches and prepared patent applications on a project basis. He was the recipient of NASA Tech Brief Award, Lockheed Disclosure of Invention Award, NASA Patent Application Award (awarded US Patent No. 5,924,329), and NASA Programs and EVAS Team of the Month awards.

From 1992 to 1994, while studying law, John was a practicing US Patent Practitioner, specialized in the preparation, filing and prosecution of patent applications for independent inventors and small businesses.  During this time, he performed patent searches, provided patentability opinions, drafted patent drawings, and wrote, filed and prosecuted patent applications before the U. S. Patent and Trademark Office.

From 1989 to 1991, John worked as a manufacturing engineer, project manager and patent specialist for AirBorn Connectors Inc. in Addison, Texas.  He was primarily responsible for the design and development of electronic connector assembly equipment.  He evaluated manufacturing processes, designed tests and fixtures, and machinery components.  He contributed significantly to new product design through brainstorming.  He also initiated and performed informal patent searches on competitor’s equipment. He was a named co-inventor in U.S. patent 5,203,813.

From 1985 to 1987, John was a research engineer with Harris Graphics Corporation (now Heidelberg Harris).  He reported directly to the V. P. of R & D, Director of Engineering, and Director of New Product Development. He was project leader/designer of ink metering blade system for printing presses, the implementation of which enabled significant cost reduction.  He was awarded U.S. patent 4,773,327.

From 1983 to 1985, John was president and project manager for Ravencrest Tool Company of Richardson, Texas.  He reported to a managing board. John was solely responsible for conception, design, development and production of hand and power tool systems. He supervised 13 employees.  His accomplishments include design, drafting and sourcing of component parts for ease of manufacturing and to yield more competitive products.  He designed the plant layout, and selected and supervised the installation of machinery. He was awarded U. S. patent nos. 4,520,697; 4,602,534; 5,347,892; 5,172,823 as well as related foreign patents.  In 1986, he received the “Invention of the Year Award” from Congressman Jake Pickle of Austin, Texas (products were sold through Sears department stores nationwide).

PERFORMANCE AND LICENSES:

Texas State Bar results: MPRE 143/150; MBE 158; Registered US Patent Attorney (No. 35,289); Attorney-at-law (Texas 00795536, Washington DC 489310); registered Swiss Patent Attorney (registration No. 10249); EUIPO Trademark and Design Attorney (81258-firm reg.). Admitted to practice before the Federal Circuit Court of Appeals and the bar of the District of Columbia.  Admitted before an International Bar of a European Union member state (Bucharest Bar 3555/C/26.03.2012) and the Intellectual Property Bar of Liechtenstein (registration No. 10249); Registered Professional Engineer (Texas Reg. No. 68980, inactive).

ACTIVITIES/PERSONAL:

John is recipient of the Educational Enrichment Award from Partners in Space (nonprofit educational organization) and was featured on Smithsonian Institution’s Invention Series, produced for the Discovery Channel, ’95-’96.  He is a citizen of the United States and Switzerland.  John is married and is the father of three children.  He is also Consul of Internations, St. Gallen chapter. John enjoys fine food, foreign language, boating, fast walking, and hiking.