John Montgomery

People

Title: Partner
Qualifications: U.S. Patent Attorney and Attorney at Law

Location: Houston

montgomery@oshaliang.com

PRACTICE AREAS AND INDUSTRIES SERVED

John Montgomery’s practice includes domestic and international trademark selection, registration, acquisition, transfer, licensing, use counseling, policing, enforcement, and defense.  He is experienced in US trademark administrative and litigation practices and procedures including Opposition and Cancellation proceedings before the US Trademark Trial and Appeal Board (TTAB) as well as federal court litigation.  Mr. Montgomery is also a licensed US Patent Attorney and has a wide range IP counseling experience with both a broad scope of understanding of the interplay of business and intellectual property matters and also specific knowledge in areas including trademark, patent, copyright and litigation in many industries.  Patent applications include mechanical engineering patents, aerospace, alternative energy, automotive, computer science, consumer electronics, financial, industrial chemical production, manufacturing, medical devices, and oilfield.

EXPERIENCE

Mr. Montgomery has a dynamic intellectual property law practice, primarily in areas of trademarks and patents.   He has filed and obtained hundreds of U.S and International Trademark Registrations.  He has supervised U.S. and International branding programs, including trademark filings, acquisition, maintenance and enforcement. He has conducted numerous trademark appeals, oppositions and cancelation matters before the Trademark Trial and Appeal Board (TTAB) where he has been listed as the attorney in more than 50 proceedings.  He has also handled trademark litigation matters.

Mr. Montgomery has mechanical engineering experience for patent applications and has a broad range of IP business  counseling representing established companies and startup companies in areas of confidentiality, trade secrets, patents, trademarks, copyrights, licensing, IP acquisition due diligence, administrative and litigation enforcement and defense. His extensive patent and trade secret experience encompasses invention development, documentation, prosecution, enforcement, technology transfers, defensive product designs, patent infringement, and validity studies and opinions.

Mr. Montgomery’s practice has included matters involving patent procurement and legal advice regarding patent protection, new product design and infringement avoidance for engineering technology companies, in areas of medical devices, underground pipelines, off shore drilling platforms, automotive technologies, heavy construction, road, oil field production, chemical production plants, and mining equipment. Particularly, these matters have included complex mechanical, electro-mechanical, hydraulic, industrial processing, and medical devices, including automobiles, printing presses, cryogenic pumps, lighting systems, commercial ovens, magnetic resonance imaging, dental devices, optical measuring instruments, carbon processing plants, surgical devices, medical pumps, and controls.

EDUCATION

  • J.D., high honors, Texas Tech University School of Law (1982)
  • B.S., Mechanical Engineering, University of Texas at Arlington (1978) At University of Texas at Arlington, Mr. Montgomery was a member of Pi Tau Sigma and Tau Beta Pi

ADMISSIONS

  • Court of Appeals for the Federal Circuit
  • State Bar of Texas
  • United States District Court for the Northern District of Texas
  • United States District Court for the Southern District of Texas
  • United States Patent and Trademark Office

SELECTED PUBLICATIONS

SELECTED PRESENTATIONS

  • Bullet Proof Due Diligence, Technology Conference Center IP Panel Discussion (2002)
  • MIT Enterprise Forum, IP Primer Matrix (2003)

PROFESSIONAL ACTIVITIES AND MEMBERSHIPS

  • American Intellectual Property Association
  • International Trademark Association