By Sheila Pursglove
Legal News
With his background in mechanical engineering, it’s not surprising that Intellectual Property (IP) lawyer Jon Shackelford has a soft spot for entrepreneurs.
“My heart beats in rhythm with the common inventor/entrepreneur,” he says. “They usually come to us cash-strapped but full of hope and enthusiasm.”
Shackelford and law partner Brad Smith launched Endurance Law Group in January in the historic Blake Building in downtown Jackson. As IP lawyers, the two serve clients across a wide spectrum of business sizes and types.
“Jackson attracted us on a number of levels,” Shackelford says. “Geographically, it’s strategically located in a very large region of South-Central Michigan that we considered to be underserved by the IP-legal community. The area has a surprisingly deep and capable manufacturing/industrial community, and we perceive there’s also real entrepreneurial potential. The local business community has been exceptionally welcoming to us—we’re very pleased we decided to locate our business here.”
Much of the IP world resides at the intersection between technology and business, and Shackelford enjoys helping clients use IP in smart, effective ways to achieve their business goals.
“Writing a really good patent application requires a tremendous amount of creative effort and attention to detail,” he says. “After carefully listening to an inventor tell his or her story of the invention, my job is to compare their idea to the vast collection of pre-existing knowledge—‘prior art’—and distill what part of it is truly protect-able. Then I imagine all the ways competitors might try to circumvent this patent, so the application can be written in the broadest terms available.”
Since many IP services are time sensitive and valuable rights can be lost if proper steps are not taken early in the process, Shackelford developed “self-help” materials that enable clients to move forward with projects in an extremely cost-effective manner. These include “how to” guides to make a preliminary patent search and to draft a Provisional patent application, with examples to show the level of detail and customary format.
“Every patent application has to, by definition, be new and not readily apparent,” he says. “This creates a continuous moving-target in the patent work. Changes in the law are also a challenge, and recent shifts in the definition of patentable ‘methods’ have created difficulties for many clients.”
Also, the recently enacted patent reform legislation—Leahy- Smith/America Invents Act—is making fundamental changes to the patent system.
Shackelford shares his expertise as an adjunct professor at Michigan State University College of Law, giving students a practical, hands-on introduction to writing patent applications.
“Teaching is very rewarding and also very challenging,” he says. “The biggest challenge for students is in the area of communication skills—effective, clear writing.”
IP is an ideal field for students if they have the right technical chops and aptitudes, he says.
“Businesses all over the world need IP to protect their intangible intellectual assets. Intellectual property is the collective term for a variety of legal mechanisms used to transform the ‘fruit’ of creative and inventive endeavors into property rights. IP allows a business to distinguish itself from its competitors. As long as there’s a competitive business landscape, IP will be in demand.”
Shackelford was “seduced” into the IP field in his senior year of Lawrence Institute of Technology, when a patent attorney invited him to interview for an intern program.
“I learned I’d have the opportunity to work with creative people, use my engineering skills, get paid to learn how things work, and—the coup de grace—I’d never have to solve another differential equation for the rest of my life.”
A graduate of Wayne State University Law School, he spent his first 9 years in private practice before taking an in-house position as the sole staff IP lawyer with Southfield-based automotive parts supplier Federal-Mogul Corp. After the company made several major acquisitions Shackelford headed an international team of IP professionals.
“That was a very dynamic time, but I discovered a real knack for management,” he says.
After 7 years in corporate practice and living in Indiana, he and his wife and three children came back to Michigan in 2004 and he returned to private practice. He also began volunteering with the Great Lakes Entrepreneur’s Quest, a statewide business plan competition, as a way to network with the entrepreneurial community.
“What a fantastic organization,” he says. “I met so many wonderful people.”
GLEQ led him to volunteer work with TechTown at Wayne State, then to Tech Works at Kettering, to U-M’s Center for Entrepreneurship, and eventually the Jackson Inventors Network.
“I feel so alive and fulfilled when I’m among inventors. I love that I have something to share with them—an expertise to help them make smart choices about the creative elements in their business plans. I feed off their energy.”
An avid woodworker with a passion for building furniture, Shackelford has been an inventor from boyhood.
“Engineering is in my DNA—an irresistible force. I never had a chance. Many of my earliest memories involve re-designing and inventing things, and I often asked Santa to bring me power tools for Christmas.”
As a young child he once used a bowling ball to build a “burglar trap” for his parents’ home in Troy.
“I’m not quite sure why I used my foot to test the trip cord instead of a long stick, but despite the crushed toes I can confidently say that was probably one of my first ‘functionally’ successful inventions,” he says with a smile.
Over the years he has filed a few patent applications on his own inventions that seemed to have commercial potential. Most arise out of his woodworking hobby—including a stool/chair configured with a built-in, adjustable shelf that can be deployed as a side table, perhaps for a laptop or as a lectern for musicians or teachers.
“Inventing stuff keeps me sane, and gives me reason to buy more tools.”
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