John Moetteli

US Patent Attorney-at-law (D.C. Bar) 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 IP Authority. 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, currently on inactive status.

Since 1997, John 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 The World Intellectual Property Organisation (WIPO). 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 in Patent, Trademark, Design and Copyright matters as well as IP litigation issues and prosecutes patents in the IT, software, business methods, manufacturing process, electro-mechanical, medical device, and sports products fields.

John 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 international industrial property. He is also trained in mediation and arbitration through World Intellectual Property Organization (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.

John 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, the ICC Swiss Commission on Intellectual Property, the Licensing Executives Society (LES), the Association of International Business Lawyers (AIBL) and an elected member of the ICC Swiss Commission of Arbitration and ADR. He’s also the founder of the North American Attorney’s Association in Geneva, a former member of the managing committee of the Association of International Business Lawyers (AIBL), and organizer of The Silicon Valley of SG – AI, IoT, Blockchain & Webtech.

He’s lectured in French, German and English for the Swiss Intellectual Property Office, at the IMD as part of the “Programme for Executive Development” (PED), and, as adjunct professor, at the “Zurich School of Management and Law” (ZHAW), for the Da Vinci School of Intellectual Property, for WIPO (as a WIPO Patent Expert;), for the European Commission, and for the IIPLA, 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, John 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 public law school. In his Masters studies, including senior level MBA courses at the University of Houston and the University of Houston Clear Lake Schools of Business, he earned perfect marks.

Prior to his experience with Haynes & Boone, John 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.

John speaks fluent English, French and German.

Education an Honors

Doctor of Jurisprudence — University of Houston Law Center (at the time of graduation, 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, Who Is Who 1996: 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 (1996-1997), 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 at Southern Methodist University where he was elected to Tau Beta Pi and Pi Tau Sigma, national engineering honor societies.

Note: employed full-time while attending University, May 1983 through May 1995.

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 patent applications and preparing non-infringement, validity, and unenforceability opinions on patents, thereby helping Europe-based clients assess the risks of entering into the local or foreign markets, 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 1995 to 1997, John was an IP attorney with Haynes & Boone, L.L.P. 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 1995, John worked at Johnson Space Center (JSC), for NASA. Licensed as a US Patent Agent and later, US Patent Attorney, 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, recipient of NASA Group Achievement Award, recipient of NASA Team of The Month 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 1995, 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 1987 to 1989, 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).

From 1985 to 1987, John was a research engineer with Harris Graphics Corporation (later 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 an ink metering blade system for printing presses, the implementation of which enabled significant cost reduction. He was awarded U.S. patent 4,773,327.

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 US Supreme Court, the Federal Circuit Court of Appeals and the bar of the District of Columbia Court of Appeals. Admitted before an International Bar of a European Union member state (Bucharest Bar 3555/C/26.03.2012) and the Intellectual Property Authority of Liechtenstein (registration No. 10249); Registered Professional Engineer (Texas Reg. No. 68980, inactive).

Awards

Best IP Law Firm – Central Europe

Legal Awards 2019

Best multilingual IP Firm – Europe

Legal Awards 2018

IP Law Firm of the Year

Global Awards 2017

Activities / Personal

John is recipient of the Educational Enrichment Award from Partners in Space (non-profit educational organization) and was featured on Smithsonian Institution’s Invention Series, produced for the Discovery Channel, 1995-1996. 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 languages, boating, fast walking, and hiking.

US PATENT ATTORNEY-AT-LAW (D.C. BAR) AND FORMER JSC NASA ENGINEER

Shuttle Columbia's first Spacewalk

One chapter of significance was featured on the Discovery Channel’s Invention series, sponsored by the Smithsonian Institution, in 1996, namely, his experiences as a senior design engineer for NASA in Houston where he was responsible for the design and development of the ORU Transfer Device, NASA’s backup to the Canadian Robotic Arm and the Space Station Stanchion.

On the first-ever spacewalk from space shuttle Columbia, during the STS-87 mission, astronauts Winston E. Scott and MS Takao Doi worked with a simulated battery and 156-pound crane dubbed the “USA Crane”, one of John’s inventions. This was also the first ever spacewalk for Japan. The crane’s inclusion and the work with it are part of a continuing preparation effort for future work on the International Space Station.

JOHN MOETTELI FEATURED ON THE DISCOVERY CHANNEL’S “INVENTION” SERIES

Along with the mechanical telescoping crane, John designed the O-Ratchet, a mechanics’ hand tool distributed on the Internet and at Sears stores.

Headquarter Switzerland

Da Vinci Partners LLC
Rathausgasse 1
9320 Arbon
SWITZERLAND
Phone +41 71 230 10 00
Fax +41 71 230 10 01

Office Liechtenstein

Da Vinci Partners LLC
c/o Liechtensteiner Business-Center AG
Landstrasse 123
9495 Triesen
LIECHTENSTEIN
Phone +423 3990 23 4

Office Australia

Da Vinci Partners LLC
616 Harris Street
Levels 5 & 6
Sydney NSW 2007
AUSTRALIA

Office Germany

Da Vinci Partners LLC
8th floor
Theatinerstrasse 11
80333 Munich
GERMANY
Phone +49 89 710422118