John Moetteli

John Moetteli

Avvocato specializzato in brevetti degli Stati Uniti (D.C. Bar) ed ex ingegnere della NASA del JSC

Email
moetteli@davincipartners.com
Telefono
+41 71 230 10 00

Biografia

For over 20 years, John Moetteli has been a practicing patent practitioner/attorneyat-law (D.C.), having been authorized to practice before WIPO, the US and SwissPatent & Trademark Offices, as well as the Liechtenstein IPO. He’s also admitted to practice before the United States Court of Appeals for the Federal Circuit, the United States Supreme Court, the Supreme Court of Texas, the District of Columbia Bar (Washington DC), as well as the Bucharest Bar as an international attorney. In addition, after finishing his training under the tutelage of European patent attorneys while based in Geneva, he continues to successfully manage the prosecution of European patent applications. Further, he’s a Texas registered Professional Engineer, currently on inactive status.

Since 1997, John has been based in Europe and has represented U.S., European and Asian individuals and corporations, both small and large, before the US, Swiss and International patent and trademark authorities. In 1992, John founded, in the building that housed the original NASA headquarters in Houston, Texas, what later
became Da Vinci Partners LLC, owner of the “Da Vinci” brand for legal services in essentially every industrialized country in the World. With colleagues like David Koris, Sharon Gobat, and Novella Mantelli, Da Vinci Partners counsels primarily European and US clients regarding IP litigation issues and prepares and prosecutes
patent applications in the fields of IT, software (including AI applications and business methods), manufacturing process, electro-mechanical, medical device, and sports products fields. In fact. Da Vinci represented Salesforce in oral proceedings that directly resulted in Salesforce obtaining their very first European software patent. Da Vinci’s specialty is providing strategic IP advice taking advantage of unique ways of applying US law that extend the protection afforded by trade secrets while reserving US patent rights, and that maximize the protection afforded under US design patent law.

John holds an Engineering degree, a Masters in International Management and a Doctor of Jurisprudence degree which he earned magna cum laude. In addition, he’s followed courses on Chinese Patent Law, and was co-editor of a well-known international manual on industrial property. He’s also a WIPO trained mediator and
arbitrator and, formerly, an elected member of the ICC Switzerland Commission on Arbitration and Mediation.

John is particularly specialized in preparing freedom to operate, invalidity and enforceability opinions on US patents, as well as preparing and prosecuting 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.

John has been a member of the American Intellectual Property Law Association (AIPLA), the Società degli Esecutori di Licenze (LES), the International Association for the Protection of Intellectual Property (AIPPI), and the Associazione degli avvocati d'affari internazionali (AIBL) for many years. He’s also the founder of the North American Attorneys Association in Geneva and an active member of the ICC’s Commission on Intellectual Property, during its existence. He’s lectured for the Swiss Patent Office, WIPO (as a WIPO Patent Expert), the European Commission, the European Patent Institute, has served as IMD faculty for the Program for Executive Development (PED), and Zurich University ZHAW and lectured at the University of Modena, to the China Counsil for the Promotion of International Trade, as a guest speaker at Startup Days in Bern, and Startup Nights in Winterthur, as well as coached startups in Switzerland and Italy. He’s published several articles on the subject of intellectual property law as well.

Prior to moving to Switzerland, John worked in the intellectual property section of Haynes & Boone LLP, a large litigation firm with offices in Texas, New York, California, Charlotte, Colorado, Illinois, Washington, D.C., Shanghai, London, and Mexico City. Prior to his experience with Haynes & Boone, John worked at NASA as a senior design engineer and technology manager. During this time, the Smithsonian Institute featured his work on the Discovery Channel’s Invention Series cable television program.

John speaks fluent English (mother tongue), French and German.

Educazione e onorificenze

Dottore in Giurisprudenza — 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. Premi AmJur: Constitutional Law and Contracts II. Corpus Juris Secundum Award. Highest grade in his class: Int’l
Business Transactions, Professional Responsibility, International Law, and Administrative Law. Member – Ordine dei Baroni e Ordine del Coif, wellknown honorary legal fraternities.

Master of Arts — International Management Studies (Master in Business con particolare attenzione alle sfide delle operazioni internazionali) — 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 — Università del Texas (Arlington), cumulative GPA 3.3+, Honor Roll; Elected to Tau Beta Pi e Pi Tau Sigma, società d'onore nazionali di ingegneria.

Note: After freshman year, employed full-time while pursuing all University degrees, May ’83 through May ’95.

Esperienza di lavoro

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 Swiss 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. He also 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’s EVAS team. 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 certain tools for use on 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 (later renamed Heidelberg Harris). He reported directly to Marshall Gaffney, the V. P. of R & D and Director of Engineering. 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 “Premio per l'invenzione dell'anno” from Congressman Jake Pickle di Austin, Texas (i prodotti erano venduti attraverso i grandi magazzini Sears in tutta la nazione).

Prestazioni e licenze

Risultati del Texas State Bar: MPRE 143/150; MBE 158; Procuratore di brevetti registrato negli Stati Uniti (No. 35.289); Avvocato (Texas 00795536; ; Washington DC 489310 ). Ingegnere professionista iscritto all'albo (No. 68980);. Admitted to practice before the Corte d'Appello del Circuito Federale and the bar of the District of Columbia as well as US Supreme Court (Bar No. 315244) Admitted before an International Bar of a European Union member state (Bucarest Bar 3555/C/26.03.2012).

Premi

Studio legale IP dell'anno - Europa centrale

Premi legali 2020

Miglior studio legale IP - Europa centrale

Premi legali 2019

Miglior studio IP multilingue - Europa

Premi legali 2018

Consulente leader in brevetti e marchi dell'anno - Svizzera

Acquisizione internazionale 2018

Studio legale di brevetti dell'anno

Premi globali 2017

Miglior studio legale IP - Svizzera

Premi legali 2017

Miglior studio legale IP - Svizzera

Premi legali 2016

Attività / Personale

John ha ricevuto il premio Premio per l'arricchimento educativo 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, Switzerland and Italy. John is married and is the father of three children. He is a member of the executive committee of the American International Club of Zurich and has served as Consul of Internations, St.Gallen chapter, for over seven years. John enjoys fine food, foreign language,
boating, fast walking, and hiking.

AVVOCATO SPECIALIZZATO IN BREVETTI (D.C. BAR) ED EX INGEGNERE DELLA NASA JSC

La prima passeggiata spaziale dello Shuttle Columbia

Un capitolo importante è stato presentato nella serie Invention di Discovery Channel, sponsorizzata dalla Smithsonian Institution, nel 1996, vale a dire le sue esperienze come ingegnere senior di progettazione per la NASA a Houston, dove è stato responsabile della progettazione e dello sviluppo dell'ORU Transfer Device, il supporto della NASA al Canadian Robotic Arm e allo Space Station Stanchion.

Nella prima passeggiata spaziale in assoluto dallo space shuttle Columbia, durante la missione STS-87, gli astronauti Winston E. Scott e MS Takao Doi hanno lavorato con una batteria simulata e una gru da 156 libbre soprannominata "USA Crane", una delle invenzioni di John. Questa è stata anche la prima passeggiata spaziale in assoluto per il Giappone. L'inclusione della gru e il lavoro con essa sono parte di un continuo sforzo di preparazione per il futuro lavoro sulla Stazione Spaziale Internazionale.

JOHN MOETTELI PRESENTE NELLA SERIE "INVENTION" DI DISCOVERY CHANNEL

Insieme alla gru telescopica meccanica, John ha progettato l'O-Ratchet, un attrezzo manuale per meccanici distribuito su Internet e nei negozi Sears.