Big picture: Attorney shares unusual case lore with MSU Law students

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By Sheila Pursglove

Legal News

 

What do automated hog slicing machines, toothbrushes, perfume bottles, and venting motorcycle jackets have in common? They’re among the unusual patent and trademark work handled by Monte Falcoff, a patent lawyer and principal at Harness, Dickey, & Pierce in Troy.

“Patent attorneys make good conversation at parties since over the years of working on many different inventions, we seem to know something about everything,” says Falcoff, who represents large, medium and small U.S. and foreign companies and universities in a wide range of technical areas. “The variety of the subjects and inventors is both fascinating and daunting.”

Other work has pertained to automotive convertible roofs, pulse shapers for ultra-fast lasers, diapers, computer software for industrial plants, pharmaceuticals, blueberry plant patents, robotic grippers, control systems for riveting machines, vacuum insulated oil pipelines, and composite automobile bodies.  

Unusual lawsuits have included: defending a French company in Oklahoma City over the automated hog slicing machine; coordinating a sting and then federal marshal seizure against counterfeit motorcycle jackets in San Diego; suing various automotive OEMs and suppliers over retractable hard top patents; defending a software company in a copyright and trade secret case pertaining to golf swing video analysis equipment; and defending a Chicago company in a trademark lawsuit over rice, brought by an Indian company.

Intellectual property law is a “perfect marriage” of a long-standing interest in science and law for Falcoff, who earned an undergrad degree in engineering from Michigan State University, then worked as a senior project engineer on various General Motors projects. Thereafter he worked as a marketing manager at United Technologies Automotive, responsible for developing, selling, and licensing new technology. He also worked there as a systems engineer for the modular headliner programs from which he had 10 U.S. patents issued; and was a patent and trademark coordinator for the company’s business unit.

The grandson of an attorney, Falcoff earned his law degree from Wayne State University Law School, and found his work experience at United Technologies gave him a well-rounded and practical foundation while he attended law school at night. 

“This background certainly helped me gain the perspective of both an inventor and executive, with regard to the need for real-world legal advice and the need for a solid return on the investment for intellectual property,” he says.

Falcoff’s father, an engineer at DuPont working on robotics and automation of paint systems, had a few patents to his name; seeing his son’s interest in this field, he set up a dinner to discuss patent law with a DuPont patent attorney.  

“Unlike my father, however, I wasn’t the typical garage mechanic who enjoyed the calculations and detailed tinkering,” Falcoff says. “I was more of the ‘concept’ guy when working as an engineer and then marketing manager at United Technologies. I typically started with a clean sheet of paper, worked on the clay styling, and then took the parts through a prototype tooling phase.”

According to Falcoff, he is a bit unusual in the IP world since he does almost everything from patent preparation/prosecution with the U.S. Patent and Trademark Office (USPTO), trademark preparation/prosecution with the USPTO, first chair patent/trademark/trade secret litigation, licensing, patent and trademark freedom-to-practice opinions, M&A due diligence for intellectual property, and associated portfolio management and client counseling.  

“Most intellectual property folks either do patent prosecution, or trademark prosecution, or litigation, but rarely all,” he says. “However, I find the variety of work to be exciting and very interesting, and that’s what my clients have traditionally needed, although it plays heck with my docket. I find this ‘big picture’ perspective leads to better quality advice, opinions and even preparing new patent applications.

“I try to avoid the stereotypical problem associated with many other patent attorneys, who are so focused on the detailed trees that they cannot see the forest. I pride myself on ‘big picture’ practical advice and high quality work. I’m not merely doing a single project for a client, such a filing a patent application or defending a lawsuit, I’m counseling the client on all intellectual property issues over decades—it’s a long-term partnership view.” 

An adjunct professor at Michigan State University College of Law ever since Detroit College of Law merged into MSU, Falcoff has taught five different IP classes. It’s just one way he gives back to MSU, where he was in the Spartan Marching Band and varsity fencing team as a student, and where he met his wife, Janet. The 2008 recipient of the Applied Engineering Science Distinguished Alumni Award, he is chairman of the MSU College of Engineering AES Alumni Advisory Board, where he regularly interacts with undergraduate students and faculty. He also does a significant amount of patenting work for MSU Technologies, the university’s tech transfer group, which allows him to work with many of the faculty and graduate students.  

“While preparing for a new class, and grading final exams or research papers can be a ton of work, teaching at MSU has been a very rewarding experience on many levels,” he says. “It completes the circle by allowing me to give back to the university, hiring the best of my law school students, identifying law school students to intern at MSU Technologies, and give advice to engineering students who are considering a career in law,” he says. 

“I enjoy the back and forth interaction with the students since I typically call on every student at least once, if not two or three times, per class—I teach in a very Socratic manner which can be grueling on both me and the students but the students always say that it forces them to learn the material, and it makes the classes much more interesting and lively.”

When hired by the MSU Law assistant dean, Falcoff asked if—instead of the small stipend that was essentially gas money—she could improve his Spartan season football tickets.  

“Her response was that she had a fair amount of power but not that much,” he says. 

This past winter, Falcoff started a new class—Intellectual Property Practicum—in which he assigns a patent search report, patent application drafting, a patent invalidity opinion, a trademark clearance opinion, patent interrogatories and document requests, and a license agreement for patents, trademarks and trade secrets. 

“This should give these MSU law school students an edge when they begin their careers,” he says. 

According to Falcoff, the patent field is always hiring—except for about two years during the recent recession—and hiring is typically based on undergraduate degrees, with electrical, mechanical, computer, materials, chemical engineering and biotech (Ph.D.) in high demand, and chemistry, physics, and some other degrees to a lesser extent. 

“To be admitted to practice before the USPTO, a person needs to have a rigorous technical degree, such as engineering, in addition to the law degree, which tends to limit the qualified pool,” he says. “Trademark and copyright attorneys don’t need a technical undergraduate degree and neither do patent litigators, but we find it beneficial, especially when deposing an opponent’s engineers and technical experts, or pawing through boxes of engineering drawings and test data. One of the reasons there are not more patent attorneys is that to be competent, the job requires engineers or chemists who can write well, and those two skills don’t typically go hand-in-hand.” 

Originally from Delaware and Maryland, Falcoff is now a proud Michigander, and lives in Bloomfield Township with his wife, college sophomore daughter, Rebecca, and high school senior son, Tyler. An assistant Scoutmaster with his son’s Boy Scout troop, he and Tyler enjoyed an interesting and challenging two-week backpacking trek high in the New Mexico mountains—at altitudes between 6,000 and 11,000 feet. 

“It was a wonderful—albeit grueling—adventure,” he says. “Fortunately, we survived the bears, storms, and food, and our group was still on speaking terms at the end.”

Falcoff has many clients in France, and travels there at least once a year. 

“Most of the meals are phenomenal as you would expect,” he says. “Nevertheless, at one meal in the backwoods of Provence, when defending my client for depositions, the special of the restaurant—essentially the only dish available—was an extra tough kangaroo steak. 

“With enough good wine you can eat about anything, but I didn’t ask for seconds. The judge presiding over the depositions, who was sitting across from me at lunch, was clearly enjoying the kangaroo much more than I was—or maybe I simply didn’t fully understand his French comments,” he says with a smile.

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