Slice of life- Attorney shares unusual case lore with MSU students

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."

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.

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.

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.

An adjunct professor at MSU 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.

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.

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.

Published: Thu, Aug 16, 2012