Keith R. Derrington

Senior Counsel

P 713.221.1515
F 713.437.5320
E ron.derrington@bgllp.com

Assistant

Kim Wattner
713.221.3381

Keith (Ron) Derrington has experience counseling Fortune 100 clients, including those within the Fortune 10, with regard to the development, feasibility, and protection of their intellectual property matters. Mr. Derrington has drafted, filed, and prosecuted numerous patent applications directed to oilfield exploration and production hardware (including subsea applications), refining processes, chemical processes, aeronautical guidance systems, laser ultrasonic devices, rotating equipment, electrical and electro-mechanical devices, automotive improvements, fluids handling equipment, software applications, and petrochemical plant hardware. He also participates in due diligence activities and negotiations for intellectual property that is the subject of mergers and acquisitions and counsels U.S. and international clients in worldwide intellectual property ownership in the energy, oil and gas, transportation, and aerospace and defense industries.

Mr. Derrington is experienced in preparing and evaluating license agreements and in preparing opinions regarding patentability, validity, infringement, and clearance. His opinion work includes technologies related to downhole perforating devices, wellbore completion tools, alternative fuels, automotive devices, electromagnetic inspection apparatus, chemical processes, and polymeric products.

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His trademark experience includes preparing and prosecuting numerous trademark applications for various businesses and corporations including Fortune 500 companies. He is also experienced in the development of software licenses, non-competition agreements, and trade secret matters.

Prior to entering the legal field, Mr. Derrington spent over 10 years as an engineer both in the design field and as a reliability engineer. As a design engineer, Mr. Derrington provided engineering consulting services to major petrochemical and petroleum refining companies. His responsibilities required an intimate knowledge of the petrochemical plant hardware and processes. As a reliability engineer, Mr. Derrington was responsible for providing technical engineering support for the Orbiter portion of the NASA Space Transportation System.

Representative Matters

Represented international energy companies, oil field service companies and manufacturers in patented technologies including: well head assemblies, wellbore completions, downhole tubulars, perforations systems, submersible pumping systems, drill bits, laser testing for analyzing composite materials, and various nanotechnology innovations.

Represented a renewable energy company in counseling patentability opinions and prepared and filed patent applications for solar technology.

Publications and Speeches

"Lid Blown Off Patent False Marking Claim," LES Insights Magazine, October 26, 2010.

"Forest Group v. Bon Tool Co.: The Effect on Licensing of Patents," les Nouvelles, September 2010.

"Forest Group v. Bon Tool Co.: The Effect on Licensing Patents," IP Litigator, July/August 2010.

"Penalty For Patent False Marking Set At Highest Sales Price," IP Frontline, May 2010.

Presenter, "Forest Group v. Bon Tool Co.: The Effect on Licensing Patents," AIPLA Conference, New York City, May 6, 2010.

Education

J.D., South Texas College of Law, 1996
B.S., Mechanical Engineering, University of Houston, 1986

Bar Admissions

Texas
U.S. Patent and Trademark Office

Court Admissions

U.S. District Court for the Southern District of Texas

Affiliations

State Bar of Texas, Intellectual Property Section
Houston Intellectual Property Law Association, Board of Directors 2001-2003, Chair of Communications Committee 2010-2012
Intellectual Property Owners Association
American Intellectual Property Law Association, Chemical Practice and Licensing and Management of IP Assets Committees