John DeBoer has over 10 years of specialized experience in intellectual property.  He currently practices in all major areas of intellectual property, including patent, trademark, and copyright law, with an emphasis in global patent prosecution services (prior art searches, patent application preparation, response to patent office communications, and appellate/reexamination).  His technical areas include oilfield tools and services, mechanical, chemical, energy (hydrocarbon and green), bio, food preparation, sporting goods, construction, and more.

John has provided service to law firms and Fortune 500 companies in the Houston area, as well as being general IP counsel to clients and small businesses.  He was previously a patent examiner at the USPTO, and has also worked in the chemical and petroleum industry, including upstream and downstream operations.

Away from work, John enjoys reading a book with his son, and finding time to fit in a good workout.  His life will dramatically improve if the Longhorns can find their way back to winning more football games.

 

 

John’s other Experience and Success includes:

  • Prepared and filed 100+ patent applications (US and abroad)
  • Worked with (and still do!) Downhole Technology, LLC of Houston, Texas to comprehensively develop their IP strategy and related portfolio -- a local startup company in 2010, and now just six, short years later (despite the downturn in energy) valued at over $100 Million USD
  • Represented a stock photograph company and professional photographers with copyright enforcement and licensing, recouping over $1 Million USD in lost revenue
  • Successfully negotiated a settlement on behalf of artists against Donald J. Trump For President, Inc. for its unauthorized exploitation of an award winning photograph
  • Successful domain acquisition on behalf of Client through domain name dispute proceeding
  • Received ‘Best Dad Ever’ award from his 7 year old Son

 

Representative Litigation

  • Shattil et al v. Donald J. Trump for President, Inc. et al (SDNY 2016)
    Copyright infringement, pro hac vice admission, successful settlement
  • Flaherty v. Bd. Of Regents Univ. System Ga. et al. (NDGA 2016)
    Copyright infringement, pro hac vice admission, successful settlement
  • Matera v.  Massey’s Professional Outfitters (EDLA 2016)
    Copyright infringement, pro hac vice admission, successful settlement
  • Downhole Technology, LLC v. Dharshinee Naidu (WIPO 2017)
    UDRP Proceeding, successful domain transfer

 

Bar Memberships

  • U.S. District Courts: Southern District of Texas, Eastern District of Texas, Western District of Texas, Colorado
  • Texas State Bar
  • U.S. Patent & Trademark Office (59,294)

 

Articles and Publications

  • Debunking In Re Keller, The Patent Prospector (March 2010)
  • Evolution of ‘Markman’ and its affect on the Oil and Gas Industry, Weblog (October 2010)
  • Time to Disclaim the Trademark “Disclaimer Rule”?, SBOT IP Law Section (May 2012)
  • What will the Dallas USPTO Satellite Office Mean for Patent Practitioners in Texas?, SBOT IP Law Section (January 2013)

 

IP Blog and Presentations

  • Authoreyez, authoreyez.com
    Articles and case summaries related to copyright law
  • Copyright Law and Innocent Infringement, for Texas Accountants and Lawyers for the Arts (July 2013)
  • IP General Overview, for Alabama-Coushatta Tribe of Texas and the Indian Arts and Crafts Board, U.S. Department of the Interior (August 2013)
  • Copyrights and Copywrongs, for The Woodlands Chamber of Commerce (December 2014)

 

Education

  • Juris Doctorate in Law, May 2009
    South Texas College of Law
  • Bachelor of Science in Chemical Engineering, May 2002
    University of Texas at Austin