The real McCoy: New patent office named after Michigan inventor

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By Sheila Pursglove

Legal News

The prolific 19th century Michigan inventor Elijah McCoy, best known for inventions that revolutionized heavy-duty machinery, secured more than 50 patents in his lifetime. He would probably have been amazed to learn that the U.S. Patent and Trademark Office has a backlog of more than 750,000 patent applications, and entrepreneurs cooling their inventive heels for three or four years before getting a green light -- a logjam that slows down innovative business development and job creation.

So McCoy -- he of "the real McCoy" term indicating superior products -- would also no doubt be delighted that the new Detroit satellite patent office bears his name, thanks to the efforts of Sen. Debbie Stabenow, one of the leaders in the effort to land the office for Detroit and author of the measure to name the office after this inventor and entrepreneur, the son of former slaves.

The office, in the Stroh River Place Building in Rivertown, just east of downtown Detroit, and the first such facility outside the nation's capital in the USPTO's 200-plus year history, officially opened July 13 in a ribbon cutting attended by U.S. Commerce Secretary Rebecca Blank; USPTO Director David Kappos; and a number of dignitaries including Senator Stabenow and U.S. Senator Carl Levin, Congressmen Gary Peters, Hansen Clarke, John Dingell, and John Conyers; Mayor David Bing; and Mary Sue Coleman, president of the University of Michigan, one of the top 14 universities worldwide for patent success, and awarded an average of 80 patents per year.

Detroit leads the way for three more offices to follow later -- in Denver, Dallas, and Silicon Valley -- in an overhaul of the USPTO mandated by last September's passage of the America Invents Act. According to a report from the U.S. Commerce Department, IP-intensive industries are the source -- directly or indirectly -- of 40 million jobs, and contributed $5.06 trillion to the U.S. economy in 2010.

The Motor City is first out of the gate because of the auto industry, high volume of patenting activity, high percentage of scientists and engineers, educational and major research institutions, and significant number of patent agents and attorneys. According to the USPTO, work initially will focus on patent applications with mechanical and electrical engineering applications.

The 31,000-square-foot office, previously filled by a regional office of the U.S. Census Bureau, will employ about 120 people. Situated on the banks of the Detroit River, and listed on the National Historic Registry, the building once housed the Parke-Davis Laboratories as well as the Stroh's Brewery Headquarters.

The new satellite office will be a boon for local law firms in the IP field. Steve Walmsley, a shareholder in the Troy IP law firm of Reising Ethington -- which counts Elijah McCoy among the firm's early clients -- said his firm's clients compete in a wide range of industries and often come with extremely cutting-edge technologies. The firm, which took part in meetings during the planning stages of the Detroit patent office, has attorneys in its Detroit and Dallas offices who will be able to meet face-to-face with patent examiners without traveling to D.C., saving clients time and money, Walmsley said.

A lunch and building tour was held July 11, along with a panel session, "IP for the Executive: From the Backroom to the Boardroom," moderated by USPTO Deputy Chief of Staff Azam Khan.

Michael Walsh, CEO of LexisNexis Legal & Professional, whose firm hosted and sponsored the event, was on the panel, and said that intellectual property rights and related law are extremely important to businesses of all types and sizes -- in Detroit, in the U.S. economy and globally.

"IP issues are clearly much more important to the executive agenda than ever before and then, as a result of that, there is a much greater need for companies to apply more resources on IP issues and protection -- particularly legal expertise and technology," he said.

Walsh noted Detroit is a major center of U.S. innovation and production -- particularly for a new generation of automobiles, but in other areas, too; and that between agriculture and industry, the Midwest region is a vital area for the U.S. economy.

His company looks at the whole market for IP technology as a very attractive and growing area for LexisNexis.

"We've invested in and launched a number of solutions to help legal professionals efficiently and confidently manage their patents and stay current on trends and issues related to IP," he said.

IP issues are also critically important to business at LexisNexis. Over the past few years the company has made a major investment to develop a world-class technology infrastructure and to launch new products from it, Walsh said.

"The ability to protect that those creations and intellectual property is vital, and we appreciate the U.S. Patent and Trademark Office's efforts," he said.

Panelist Monte Falcoff, a principal and patent and trademark lawyer at Harness Dickey in Detroit and an adjunct professor of IP law at Michigan State University College of Law, said the USPTO will find Metro Detroit a great place to do business.

"Patent quality should increase by the PTO hiring examiners from the very talented and experienced engineers and patent attorneys in Michigan," he said. "Approximately two-thirds of the patent examiners in the PTO's Northern Virginia office have little or no real world engineering experience but that should become less of an issue with the new Detroit examiners. In turn, these more technically experienced examiners should better understand the patent applications, prior art and the ordinary skill level in the industry thereby improving the patent examination process."

A public search room with the "East" database terminals should make patentability, freedom-to-practice and state of the art searches much easier and less expensive, Falcoff said.

"The East system is far faster and easier to use than the online free searching tools otherwise available," he said.

Falcoff, whose firm has been ranked fifth most active in U.S. patent issuances, noted that opening a satellite office in Detroit recognizes the significant innovations that have come out of Michigan companies and universities.

Sharon Brady, assistant general counsel IP for Midland-based Dow Corning Corp., served on the panel, and said it provided lively discussion around all aspects of IP ranging from the operations at the new office, to the effects of the recent changes in patent law, to capturing value from the patents. She emphasized that innovation is a critical success factor for economic recovery in Michigan and the U.S., as it is for businesses like Dow Corning.

"Strong intellectual property practices and standards are essential to enabling companies and research institutions to innovate new products, governments to cultivate new jobs and investment, and for industries to grow," she said.

"The USPTO's new office serves as a proof point that Michigan is an hub of innovation -- Dow Corning hopes the office is another step in recognizing the significant innovations that are developed right here in Michigan and are impacting the world."

Panelist David LaPrairie, a partner and head of the chemical patent practice at the IP firm of Howard & Howard in Royal Oak, is experienced in handling a wide array of mechanical, electromechanical and chemically-oriented patent applications before the USPTO. LaPrairie said the estimated 100 new patent examiners in Detroit, and similar additions in Denver, Dallas, and Silicon Valley, should over time drive more effective and quality patent examination and, ultimately, lead to a reduction in the backlog in examining new and pending patent applications.

"Such improvements will be an enormous benefit to our entire client base," he said. "From our partnerships with our clients, we know that increased predictability in quality and timeliness is a critical consideration."

Panelist Bill Coughlin is President and CEO of Ford Global Technologies, which manages all aspects of intellectual property for Ford Motor Co.

"We have a real chance to change the game right here in Detroit by connecting innovators to new local resources from TechShop for building inventive products, to the Detroit branch of the Patent Office for protecting those inventions, to AutoHarvest and the Motor City Innovation Exchange for licensing those inventions, and to TechTown for incubating the new businesses that will result from these efforts," he said.

Published: Tue, Jul 17, 2012

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