Monte L. Falcoff

Principal / Detroit Metro Office

With more than twenty-five years of experience as a patent and trademark lawyer, Monte understands first-hand what drives business decisions. He worked in-house at United Technologies Automotive (UTA), where he was responsible for patent and trademark management and marketing initiatives, and for developing, selling, and licensing new technology. An engineer before practicing law, Monte invented many U.S. patents for UTA. These “insider” perspectives make Monte a valuable counselor, one who has an extremely pragmatic approach to business and law.

Clients benefit from Monte’s background by receiving pragmatic yet creative counsel for managing all of their IP needs. For example, Monte considers whether a company’s invention is fast-to-market and easy to copy, or is still in an early R&D stage or complex to copy, and recommends differing worldwide patent procedures accordingly. Knowing when to file a provisional and PCT application versus a regular utility patent applications followed by a German utility model can save clients big money and competitive advantage. Similarly, filing a Madrid Protocol international trademark application for a worldwide brand launch is measured against an incremental, country-by-country filing approach to find the more cost effective approach for companies of different sizes and needs. Each client, regardless of size, receives this kind of tailored support and consideration.

His practice is both broad and deep, and ranges from IP portfolio management; to client counseling and opinion drafting; to the preparation and prosecution of patent and trademark applications; to complex and high-stakes plaintiff and defendant patent, trademark, copyright, trade secret and contract lawsuits across the country. He has expertise in many different industries and for many differently sized companies throughout the world, and he often handles patents and trademarks from cradle to grave, having often licensed and litigated patents, trademarks and associated contracts he prepared. Monte prepares and prosecutes patent and trademark applications on a global scale, and is lead counsel on many patent, trademark, copyright, trademark and contract lawsuits in district courts throughout the U.S., and in IPR proceedings before the USPTO. Furthermore, he has considerable expertise in helping European companies protect and enforce their intellectual property, or circumvent and defend themselves against others.

An asset builder, problem solver and end game strategist, Monte represents some of the most prominent organizations driving IP related commerce today. His clients range from multi-national corporations, to foreign and domestic privately owned companies, to small U.S. based start-ups. His innate ability to synthesize legal, scientific and technological theory into a practical, legal solution has proven invaluable to his clients when critical market share is at stake.

Exemplary industries and technical areas where Monte has considerable litigation, licensing, patent and trademark expertise include:

3D printing
Lasers
Electromechanical medical devices, software based diagnosis machines, acetabular and ophthalmic implants, and surgical and dental tools
Automotive vehicle convertible roofs, sunroofs, electromechanical actuators, switches, interior trim, hybrid-electric powertrains, transaxles, windows, adhesives and mechanical fasteners
Composite materials in the aerospace, automotive, wind turbine, generator and truck trailer industries
Clothing, airbags, and other textile products and weaving machines
Welding, clinching and other metal fastening techniques
Injection molding and metal stamping machines
Robotics and automated machinery
Pharmaceutical and chemical compositions, manufacturing equipment and processing methods
Cement and asphalt manufacturing equipment and compositions
Agricultural crop processing; large-scale food processing and manufacturing equipment; point of sale technology for restaurants and other retail settings; and food and beverage products, such as coffee products and energy drinks
Conveyors for mail and automotive parts
Pleasure boats and large ships, including accessories
Computer software for PDAs, smart phones and manufacturing equipment
Plumbing including valves, faucets and fluid connectors
Perfume and cosmetic compositions and containers
Oil well extraction equipment and processes
HVAC equipment, building water chillers and machine cooling systems

Practice Areas

Industries

Zuzga v. Michigan Sugar Co. v. Zuzga – ED Michigan (patent ownership, copyright infringement, trade secret misappropriation and breach of fiduciary duty causes of action re: agricultural processing machinery)
Laboratoires Majorelle SAS and Majorelle International SARL v. Apricus Biosciences, Inc., NexMed (U.S.A.), Inc., and Ferring International Center S.A. (dba Ferring Pharmaceuticals) – SD NY (pharmaceutical patent and trademark license)
LD Technology v. Impeto Medical SAS v. LD Technology/A. Maarek – SD Florida (electromechanical medical device patent, trademark, false advertising)
UUSI LLC (dba Nartron) v. Robert Bosch LLC and Brose North Am, Inc. – ED Mich (anti-pinch window controller patents)
UUSI LLC (dba Nartron) v. Webasto Roof Sys., Inc. – ED Mich (anti-pinch window controller patents)
Dental USA, Inc. v. McClellan et al. – ND Illinois (dental tool design patent, trademark and copyright)
LT Overseas North America, Inc. v. New Royal Distributors, Inc. – CD Cal (food trademark)
Jarvis Products Corporation v. Durand International S.A. – WD Okla (hog slicing machine patent)
Specialty Vehicle Acquisition Corporation v. American Sunroof Corporation and Dmitri Chevtsov – ED Mich (automobile trademarks)
Robison’s, Inc. v. LoFom, Inc., et al. – SD Cal (clothing trademark – Marshall seizure)
Astar v. Parhelion Technologies, Inc. – AAA Arbitration (software development contract)
Babcock & Wilcox Co. v. Tidelands Oil Production Company, et al. – CD Cal (oil extraction patent)
BDG-TNDR Corp. v. Honeywell and Johnson Controls Inc. – SD Florida (HVAC patent)
Perceptron Inc. and Ford Motor Co. v. FORI Automation Inc. – ED Mich (laser and software, automobile wheel alignment patent)
Olaes Enterprises Inc. v. A.D. Sutton, Robison’s Inc. v. Orange County Choppers Ltd. – ED NY (clothing copyright and trademark license)
Intersport Fashions West, Inc. v. Marco Distributing, Inc. (Robison’s, Inc.) – CD Cal (motorcycle jacket patent and false advertising)
ASC Inc. v. Dr. Ing. h.c.F. Porsche AG – ED Mich (automobile convertible roof utility and design patents)
Injection Molding Industries v. CITO Products, Inc. – ED Mich (molding machine manifold, false advertising and trade dress)
Interactive Frontiers, Inc. v. Astar and Parhelion Technologies, Inc. – ED Mich (golf software copyright and trade secret)
Extang v. Custom Form – ED Mich (truck tonneau cover patents)
United Technologies Automotive, Inc. v. Pontiac Coil – ED Mich (solenoid automobile patent)

Exemplary Patents & Trademarks

In the News

Presentations

Monte was a guest speaker at an IP conference held in Strasbourg, France, in October 2019. The conference centered around the practical implementation of France’s new PACTE law. Monte led a presentation on using provisional patent applications as a strategic tool under the new law. The event was hosted by the National Institute of Industrial Property (INPI), the French agency responsible for patents and trademarks.
Monte was the moderator for a 3D printing and advanced materials panel of technical experts and CEOs at Automation Alley’s Integr8^TM conference held in Detroit on November 9, 2017. Monte also gave a presentation of patenting trends in 3D printing at the same event. View his presentation on 3D Printing Patent Analytics online.
Monte was a guest speaker on intellectual property topics to a new product development and marketing class at Walsh College in Troy, Michigan, in 2016 and 2017.
Monte was invited to participate in the opening of The Elijah J. McCoy Midwest Regional Office (MWRO) of the USPTO on July 11, 2012, where he was part of a panel discussion moderated by USPTO Deputy Chief of Staff Azam Khan.

Blogs

Monte has also served as an Adjunct Professor of various patent and trademark law classes at the Michigan State University College of Law for more than twenty years.

Awards & Distinctions

Best Lawyers, Patent Law and Litigation – Intellectual Property, 2018-2022
Best Lawyers, Trademark Law, 2014-2022
DBusiness Magazine, “Top Lawyer,” Intellectual Property and Patent Law, 2018
Leading Lawyers, named a “Leading Lawyer” for Copyright & Trademark, Intellectual Property, and Patents, 2014-2021
Business Magazine, “Top Lawyer,” Trademark Law, 2014
Michigan State University College of Engineering, “AES Distinguished Alumni Award,” 2008
Wayne Law Review, Note and Comment Editor

Memberships

Michigan State University College of Engineering, Chairman and Vice Chairman of the Applied Engineering Sciences Alumni Advisory Board, 2002-2013
Wayne State University College of Engineering, Anderson Engineering Ventures Institute (Facilitating WSU startup businesses, innovation and entrepreneurship) Advisory Board Member, 2015-present