By Sheila Pursglove
Legal News
If law students don’t like the assignments in his practical patent law class, they won’t enjoy being an intellectual property lawyer, says Monte Falcoff, an IP lawyer and principal at Harness, Dickey & Pierce in Troy and adjunct professor at Michigan State University College of Law.
But who wouldn’t enjoy a class where one assignment includes a made up submarine-mounted, remote controlled gripper for grabbing underwater wreckage.
“It adds some fun, especially when we do the trademark clearance and registerability searching — and it also presents students with an intellectual challenge when determining licensing royalty rates,” Falcoff says.
An IP attorney with Harness Dickey for more than two decades, Falcoff has taught at MSU Law ever since the Detroit College of Law moved to East Lansing, and was approached by full-time IP faculty a couple of years ago to teach a practical patent law class.
“It’s my understanding the ABA has a new emphasis toward practical legal education, with more classes directed to clinics and ‘real-world’ written assignments; a fundamental shift from the traditional theoretical and general legal educational model followed for the past many decades,” he says.
Gearing up to teach his third year of “Intellectual Property Practicum,” Falcoff will add a few new twists.
“I decided to broaden the syllabus beyond just patent topics in order to make the students think about avoiding and solving problems on a larger scale, so I’ve included sections on patents, trademarks, trade secrets, and licensing of all three,” he explains. “Nevertheless, the main emphasis of the class is applied patent law.”
Students learn how to conduct a patentability search, prepare a patent application, respond to an Office Action (i.e., procedural and substantive rejections) from the Patent Office, prepare a patent invalidity opinion, prepare patent litigation discovery requests, conduct a trademark search, analyze trademark infringement, develop a trade secret policy for a company, and prepare a license agreement for a patent, trademark and trade secrets. While there is some case law discussion, the majority of time is spent on learning how to apply the law to day-to-day projects that regularly arise in the practice of intellectual property law, whether inside a company or in a law firm.
Falcoff’s class — typically attracting about a dozen students — will be taught over a seven-week period.
“It’s a lot of work for both the students and me, but it’s very interesting and real-world, and should give my students an edge when they begin their careers,” he says.
New attorneys do not typically work on invalidity opinions and licenses until later in their careers so this class gives students an invaluable head start over their peers.
“It’s important for attorneys to see how each project fits into the big picture, whether it be litigating a patent you wrote, how arguments made while obtaining a patent - known as prosecution history estoppel - can be later used against you when a competitor is trying to design around your patent, how patent claims or the identification of goods in a trademark registration can impact the royalties in a license,” he explains. “The earlier an IP attorney appreciates how the puzzle pieces fit together and one action impacts another, the better the advice for the client and the quality of each patent and trademark application should improve accordingly.”
A license agreement assignment at the end of the class serves as a final exam by wrapping together work product from all the preceding assignments.
Falcoff has previously taught Intellectual Property Law (a Socratic style survey class); Patent Law (also a Socratic style class); Patent Litigation (a Socratic style class but with real world written and verbal assignments mixed in); and Advanced Patent Law, a practical seminar class including a research paper and student presentations.
“It gives me a good exposure to the students’ written work, especially in the seminar classes,” he says, adding that over the years Harness Dickey has hired many of his best students.
While patent attorneys typically have undergrad degrees in electrical, mechanical, computer, materials, chemical engineering and biotech (Ph.D.), or in chemistry or physics, a high-tech and scientific frame of mind isn’t the only quality that goes into being a good IP lawyer.
“I’ve heard it said that many patent attorneys can’t see the forest for the trees - they dive so far into the technical or legal minutiae that they miss the big picture,” Falcoff says, adding that this is likely due to their rigorous technical backgrounds and education.
And so, when teaching this and past classes, Falcoff continually stresses how each project affects future projects and the “big picture” whether viewed by a judge, jury, patent examiner, client company or competitive company.
“It’s important that IP attorneys be able to write well, translate technical chaos into something normal people can understand, and present a coherent argument. I often joke that patent attorneys are technical geeks who can write well, which is an inherent oxymoron — but this is a goal of this IP Practicum class.”
Falcoff, who represents large, medium and small U.S. and foreign companies and universities in a wide range of technical areas, has obtained and enforced patents and trademarks pertaining 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, wave rotor engines for automobiles and power plants, venting motorcycle jackets, power tools, and composite automobile bodies.
His work runs the gamut from patent and trademark preparation/prosecution with the U.S. Patent and Trademark Office (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.
In teaching at MSU, Falcoff is back on familiar Spartan turf, where he earned an undergrad degree in engineering, before working as a senior project engineer on General Motors projects; then as a marketing manager and patent coordinator at United Technologies Automotive.
He earned his J.D. by attending evening classes at Wayne State University Law School while working full time, and recalls how he could instantly apply some of his class material to his day-to-day activities at United Technologies.
“For example, the liquidated damages section from contract law made its way into a contract I put together the following day, and I later used it to my favor during subsequent negotiations when the supplier missed the due date. I try to instill the same practical sense while teaching this new IP Practicum class.”
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