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.

  • 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 Integr8TM 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.

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

Civic & Charitable

  • Boy Scouts of America, Troop 1036, Assistant Scoutmaster, 2006-2012

Education

J.D., Wayne State University, 1992

B.S., Engineering, Michigan State University, 1986

Bar & Court Admissions

Michigan

U.S. Court of Appeals for the Federal Circuit

U.S. Court of Appeals for the Sixth Circuit

U.S. Patent and Trademark Office