Harness Dickey attorney Monte Falcoff presented a June seminar on patent law in France. He is pictured in Paris.
by Sheila Pursglove
Legal News
Monte Falcoff, an intellectual property attorney with Harness Dickey in Troy, headed to France in June, to serve on a three-person panel with two European patent attorneys, in a workshop seminar titled, “How should the patent attorney and the inventor work together to get an optimal protection for an invention – an exchange of views on U.S. and E.U. practices.”
The June 24 workshop was held in Grenoble in the French Alps, a three-hour ride from Paris aboard the TGV, France’s high-speed rail service. The largest research center in France after Paris, Grenoble is an important area for micro- and nanotechnology, information technology, biotechnologies, and new technologies of energy.
The seminar drew many patent managers including those from large mechanical manufacturing companies, medical equipment manufacturing companies, electrical parts companies, universities, start-ups, and governmental research laboratories.
“It was very interactive and the audience asked many questions throughout,” Falcoff says.
Falcoff, who also presented seminars in Geneva, Switzerland and Paris about the new Inter Partes Review (IPR) Patent Office invalidity proceedings, proposed this workshop when he planned to visit a client in Grenoble.
“Since Grenoble is a hotbed of high tech companies, I thought it beneficial to do both on the same visit,” he says. “I’m in France every year on business and do training seminars about every other year, but usually they are more internally presented to individual existing clients – this was the first one in Europe I’ve done that was more publicly open for a variety of companies.”
A French firm set up the location, at Atelier Culinaire et Toque, a cooking school.
“Needless to say, a fine lunch was enjoyed after the workshop,” Falcoff says. “It was difficult to concentrate on the presentation when the culinary smells were wafting around the meeting room, shared by some of the stoves.”
Falcoff and his two European colleagues compared the differences in patent prosecution strategies; the practical ways to overcome “obviousness” versus “inventive step” rejections in the patent offices; differences in the more prolific and varied independent claim quantities and formats of the U.S. system – for both the patent office and court enforcement – in contrast to the one apparatus/compound and one method independent claim approach of the European Patent Office; and the different amount of detail desired for enablement of U.S. versus European patents especially for software inventions.
The trio also discussed the impact of the June 2, 2014, U.S. Supreme Court’s Nautilus, Inc. v. Biosig Instruments, Inc. decision on patent claim construction and invalidity. The case involved a patent issued in 1994 concerning a monitor that enables an exerciser to detect heart rate using sensors placed so that electromyogram signals from skeletal muscles in motion (such as movement of an arm, or a hand gripping a monitor) don’t interfere with or mask electrocardiogram (ECG) signals from the heart. In the 1990s, Biosig allegedly disclosed the patented technology to StairMaster Sports Medical Products, Inc., who, according to Biosig, sold exercise machines that included Biosig’s patented technology; and that Nautilus, Inc., continued to do so after acquiring StairMaster. In 2004, Biosig brought a patent infringement suit against Nautilus in the U.S. District Court Southern District of New York.
“The ‘end game’ and return on the investment approaches of U.S. patent practice are often different than the considerations for many companies located in France,” Falcoff says.
Harness Dickey has many clients around the world, including Europe; some very large, and some very small, Falcoff notes.
“Patent and trademark work is very international in its pro-
tection and enforcement,” he explains. “I enjoy the different approaches each country has in its protection and en-
forcement of intellectual prop-
erty rights, and companies have different cultures in the reasons and objectives of their filing and enforcement of patents, depending on their country of origin. No one country has the perfect solution, so it’s interesting to maximize the benefits of each.”
Harness Dickey regularly hosts patent and trademark attorneys from abroad at its Troy office, where they often present topics of interest from their countries. In the past year, the firm has hosted training seminars presented by German, French, U.K., Canadian, Chinese and South Korean attorneys.
Falcoff’s trip was not all business. On a first-time visit to Geneva he attended different concerts at the city’s annual street music festival, including classical, jazz, folk music, and even an informal bagpipe band; and enjoyed weekend visits to the Louvre and Orsay museums in Paris.
“They are both great,” he says. “When time allows, I try to spend a couple of hours – I get sensory overload if I spend longer – in a different wing of the Louvre on each visit, since there is so much to see in each room.”
He also attended a ballet in the Palais Garnier, an old opera house in Paris.
“The building is fantastic and the ballet was well worth seeing – and I didn’t fall asleep for too long when the lights went out,” he says with a smile.
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