'Inventive step' - Attorney gives presentation at French IP office program

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– Photos courtesy of Monte Falcoff


By Sheila Pursglove
Legal News

Monte Falcoff, a principal and registered patent lawyer with Harness Dickey in Troy for more than 26 years, gave a presentation in early October at an annual conference hosted by the National Institute of Industrial Property (INPI), the French agency responsible for patents and trademarks.

The conference, held at the Chamber of Commerce building in Strasbourg in northeastern France, was to obtain input on practical implementation of the new PACTE law, a major breakthrough in the French intellectual property system. The law, recently enacted in France, now requires substantive “inventive step” examination of patents among other new features.

In his presentation, “United States Provisional Patent Applications: Experiences from the Great Lakes State,” Falcoff provided his views on how best to use provisional patent applications as a strategic tool, as well as their advantages and disadvantages. 

“The United States has been using provisional patent applications for about 25 years and France is about to institute a similar option—so the attendees were interested in the U.S. perspective,” he says.

He pointed out the irony of France using provisionals after the USA, since the original intent of the U.S. provisional law was to put U.S. applicants in same timing situation as European applicants—for example, traditionally many French applicants file first in France and then EPO or PCT claiming priority to the French application, thereby obtaining an extra year on the life of the EPO patent.

Falcoff gave a general overview of U.S. patent policy and types of U.S. patents, compared U.S. and European patent litigation, and how provisional applications may affect such. Complete and detailed specifications and drawings are key, he explained, and he discussed written description requirements, and enablement requirements, under U.S. law.

He noted that provisional applications are an extremely beneficial tool if used correctly, or extremely harmful tool if used poorly.

“Provisional applications are ‘fool’s gold’ and can lead to a false sense of security in the hands of the naïve or unknowledgeable independent inventor,” he said in his presentation.

The end game, he explained, is the audience that will decide if a provisional contains sufficient detail: is it the inventor, patent examiner, personal of ordinary skill in the art, judge and jury? Realistically, the un-technically trained judge and jury. Ideally, a full quality provisional should have all of the details of a regular utility application, he noted, and showed several examples onscreen, including examples of scams.

The opening speaker at the conference was Sylvain Waserman, vice president of France’s Assemblee Nationale and the fifth highest person in the French government. The concluding speech was by Guylene Kiesel Le Cosquer, president of the French Patent Attorney Association (CNCPI).  A patent examining director, the head of litigation for INPI and various other French patent and trademark attorneys also spoke on PACTE topics.

“About 90 people attended including an evenly split mix of patent attorneys, industrial patent managers and students, since Strasbourg is home of a major patent attorney training school,” Falcoff says. “I was informed afterwards, that it was notable and unusual for such well-regarded speakers to be present at the same patent event in Strasbourg.”

A former engineer and an alumnus of Wayne State University Law School, Falcoff has earned a host of accolades including Best Lawyers, Trademark Law, 2014-2020; Best Lawyers, Patent Law and Litigation – Intellectual Property, 2018-2020; DBusiness Magazine, “Top Lawyer,” Intellectual Property and Patent Law, 2018; and a “Leading Lawyer” for Copyright & Trademark, Intellectual Property and Patents, 2014-19. He also has served as an adjunct professor of various patent and trademark law classes at the Michigan State University College of Law for more than two decades.

Although Falcoff travels to Paris every year on business, this was his first visit to Strasbourg; and since the event was held on Friday evening, he stayed the weekend and enjoyed the local sights.     

“The central Grand Island, where the event and my hotel were located, is like stepping back five hundred years – many very old and well maintained medieval buildings, including the famous gothic Notre Dame cathedral and museums among the cobblestone streets and historical residences,” he says.

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