Demystifying Patent Law: Essential Knowledge for Entrepreneurs and Inventors

Patents represent one of the most powerful yet misunderstood business assets available to entrepreneurs. In this eye-opening conversation with patent attorney Emmanuel Coffey, we uncover the essential knowledge every business owner needs about intellectual property protection.

Coffey, who transitioned from a 19-year engineering career to patent law, breaks down complex legal concepts into practical insights you can immediately apply. He explains why patents provide a crucial "limited monopoly" for 20 years, allowing inventors to prevent others from making or selling their innovations. This protective barrier becomes especially valuable when you've invested significant time and resources developing your product.

We explore the three main types of patents (utility, design, and plant), what makes something patentable, and how patents differ from trademarks and copyrights. Coffey shares wisdom on patent timelines (typically 1-3 years), costs (which vary dramatically by complexity), and the critical role of patent attorneys versus patent agents in navigating this specialized legal terrain.

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To learn more about Emmanuel Coffey:

1.  https://www.coffeyllaw.com

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Transcript

Introduction to Council and Commentary

Speaker 1 0:00

As you spend money, time and effort to come up, to come to the market with a product you would, I, could use or I have, I no longer can do so because someone else has a plan welcome to counsel and commentary, the ultimate podcast for entrepreneurial lawyers ready to take their practice to new heights.

Speaker 2 0:40

Each week, we dive deep in the business strategies, growth frameworks, real world lessons you didn't learn in law school but absolutely need to build a thriving, sustainable firm. Whether you're a solo practitioner or running a small team, you'll discover actual insights on leadership, marketing, client acquisition, system building and financial management, all tailored specifically for the legal world. Hosted by seasoned entrepreneur Jonathan Tuttle, founder of Revenue Sun, a leading lawyer, google Ads and SEO agency. Also, midwest Park Capital, a boutique alternative commercial real estate asset fund business. Cash out a service-based business roll-up PE firm. And Get Podcast Bookings a podcast guesting tour agency for those wanting to get booked on top podcast shows. If you're ready to work smarter, lead better and scale faster without burning oil, keep listening and let's build a firm and life you deserve.

Meet Emmanuel Coffey: Patent Attorney

Speaker 2 1:31

Welcome back to the newest episode of Council on Commentary. Today I have a special guest and the first of this industry Emmanuel Coffey. Welcome to the show, thank you. How are you today? I'm doing well. Welcome to the show, thank you. How are you today? I'm doing well, and what I've learned by first is energy does patent? We haven't had a patent attorney on, so this will be a fun, interesting and a lightful conversation. He's also got two books coming out, and first we'll just start. What kind of drew you in to specialize in patent law?

Speaker 1 2:01

I'm sorry, I didn't quite what drew you in to specialize in your form of law. All right, let me just say that I started out as an engineer, worked in different industries for different corporations electrical engineers, to be sure for about 19 years, and then, as I was getting older, people were sourcing out to China and other places like that, so I needed to find another profession where my gray hair would add some value to, and so hence I went into patent law.

Speaker 2 2:41

I love it. Can you give me a simple definition of what patent is and why it matters? Because you know this kind of. Most people don't know exactly what it pertains to stop others from making doing the product that is patented, the system.

Understanding Patents: Types and Purpose

Speaker 1 3:08

Well, this commerce, being that it's, we know monopoly does not. Monopoly does not is not good for progress. When someone has a monopoly, they have no reason to make any effort to do anything else. Right, and so that's what patent does. It provides you with a limited monopoly for about 20 years. Now you can stop orders. See, this is another thing about patent. It's referred to as a negative right because it provides you the right to stop others from making selling. That's what it does. It doesn't provide directly, provide you directly the right perfect.

Speaker 2 3:54

Give some clarity on that. What are the typical clients you usually work with? Is it more startups, investors, corporations? Who do you typically serve? Yeah, typically startups and small business enterprises nice and you uh, I know we're talking myself from top attorneys north america. This is a podcast by partner with what is the two books you have that are coming out or are out ah, thanks for asking.

Speaker 1 4:21

Yeah, one of them is the value of your ideas, which people can get from Amazon, and it really provides some details. Patent law being somewhat exotic, not too many people are familiar with it, so at least we did write it in simple language so people can understand, so you can get a copy at Amazon. The other book is the App Developer's Guide, because we know, now it is, we have a lot of software people out there making apps and so provide them some guidance as to how they can protect their work.

Speaker 2 5:03

Perfect, perfect. Yeah, that's pretty useful, especially with everyone billing a lot of people billing SaaS softwares nowadays. Well, let's get more understanding patents. What are the main type of patents? Utility, design, et cetera. How do they differ?

Speaker 1 5:18

Okay, so we have utility, we have design patent, we have plant patent.

Speaker 1 5:24

So how do they differ? Utility is just like it says. You patent the utility of a product, whatever it may be. It doesn't have to be. People have the idea that it has to be somewhat of an exotic idea. It doesn't have to be. Look at 3M, for example. They made post-it notes right, very simple, but yet it's patented Because they don't want you to be able to make the same product as they do. So it has a certain utility to it. Okay, the design patent protects the ornamental value of a product, the ornamental value of it. So what it looks like, how it looks like its shape. For example, if you take the Coke bottle that has the shape, a certain specific shape, then they protect it on the design pattern. Now you take the it has a design pattern, but it also has. It could also have a process. But in the case of Coke it has a trade secret, because up to now Coke has always been kept as a secret, so no one has been able to reverse engineer it yet.

Speaker 2 6:48

Yeah, that's kind of like with some franchises have that too. Some of the restaurant recipes very similar to that. How do you determine whether something is patentable?

Speaker 1 6:58

All right. The test is you do a search, you do a quick search to find out if there is anything out there like it, or if there is what's referred to as prior art, meaning that if it's been described somewhere in the world prior to you coming with your idea, they can use anything out there by day. I mean, when we talk about the process, the examination process, the patent examiner can use anything that is written out there in order to reject your application, to show that there is someone else or there is an application that claims the same utility in case of a utility patent, the same utility that you are claiming, and so, therefore, we reject it. So being, if you are in the industry let's say if you are an inventor and you are in the industry you should know what's available and what's not available. Most likely, how do people come up with those ideas? It's because they have a need and they go out there, they search, for they cannot find anything that serves that need. And so, like you say, missouri is the mother of all inventions.

Speaker 2 8:22

What's the difference between a patent, a trademark and a copyright?

Speaker 1 8:27

all right a patent again is a limited monopoly for 20 years. A trademark is is, is that is a trademark defines the source of a product. Take the arch, the golden arch, mcdonald's. It defines the source of. We know what McDonald's stands for. If you take, for example, the Mercedes logo, right, it defines the source of the car. So that's a trademark Copyright.

Speaker 1 9:03

Anything that is written on a piece of paper or tangible medium is copyrighted. Now, anything. If you remember when you went to school and you were doing your homework or whatever, all of that is copyrighted. Except now what happens is you should register the copyright with the congressional house so that you give notice to the world that this is my copyright. That's the only difference, but otherwise I guess quite a while. There was some time ago when they used to say the cheap man, poor man copyright, where you write something and you mail it to yourself in order to show that it's copyright. But nowadays there is a process that you, the government, you send it to the government and they provide you with a registration number send it to the government and provide you with a registration number.

Speaker 2 10:07

Perfect. That's some good insights there, because this is an industry a lot of people don't know much about, but they need to know about. What are the biggest myths or misconceptions inventors have about patents?

Speaker 1 10:20

Misconceptions about patents. The misconception is that you have a patent and you think your patent gives you the right to provide you with more rights than you actually have A patent. When we talk about a patent, let's consider a house. It has boundaries right. The same thing for a patent. Let's consider a house. It has boundaries right the same thing for a patent. It has boundaries that limit your rights, and those boundaries are found in the claims of the patent. I don't know if I answered your-.

Speaker 2 11:00

Yeah, that was a perfect segue to the next one. So, as we talk more about the patent process, what's the typical timeline for getting a patent approved?

Speaker 1 11:09

Okay, well, it all depends. The patent office is divided into technology centers. You have, for example, you may very well have, a mechanical center, an electrical, even in the computer science center. You have different centers for different technologies, and so each would have a different workload which determine how long a patent is done. In one technology center, a patent may take one year, in another one it takes three years.

Speaker 2 11:50

Yeah, and for context for somebody who's listening how expensive is it realistically to pursue a patent from start to finish?

Speaker 1 11:59

Well, again, it all depends. If it is a very simple mechanical pattern, it's not that expensive, but when you move to like complex mechanical, it costs in the tens of thousands. Uh, again, uh, pharmaceutical, just forget about that it's very expensive. Uh, from start to finish. And again, it all depends on what we define as start to finish. Because let's say, the examiner rejects your patent and for the first time you respond to their objections and they're not satisfied. They reject it a second time and then you disagree. You say, well, no, I disagree with you, mr Examiner, or Madam Examiner, and so you take it to the patent appeal. You take your and at the patent appeal it takes a long time. So if you draft your patent such that it's very narrow, then the chances of getting your patent quicker, but then you give up some land, for that matter, so it's a trade-off. So you draft your patent narrow so that it has a better chance of getting to issuance.

Speaker 2 13:19

Perfect. That's good clarity there. What role does a patent attorney play versus a patent agent?

Patent Strategy for Startups

Speaker 1 13:27

All right, the difference is an agent. Well, I guess an agent has. All right, let's back off. To become a patent attorney, you have to have first of all, you are an attorney. You admitted in one of the states and you also now have to take the patent bar. This is an additional license that you have to have in that makes you a patent attorney. The patent agent takes the same patent bar that you do, so in that sense, the patent agent uh, work with the parents office just like you can, again, the difference being that you are an attorney and they're not, and so if you, they cannot litigate or they cannot represent the person outside of the of the balance office yeah, I don't know.

Speaker 2 14:24

I was just curious about that. How often do pens get rejected and why?

Speaker 1 14:29

all right, a pan is rejected, as we were saying before, because it is described, it is found in the public domain, somewhere out there. It is found, the examiner take. If we have different type of rejections. There is a first rejection where your patent, your app, so your application is found out there, verbatim, right. There is something else out there which really looks like works, like talks, like your pan, and so therefore that's a one or two, as it's referred to, rejection. The other type of rejection is where the examiner has to take two, prior two documents and merge them and say well, you know someone who's versed in that space can take those two and merge them and that would also read on your, on your application. So an artisan of ordinary skill that's the, the wording art, artisan of ordinary skill in the art, can use those two documents, merge them together and and and it's the same as your bat, that's the second type of application.

Speaker 1 15:59

On the substance, the other rejections are more like form, because there are certain forms that the application should be in and other things like that, but they're not as substantive. As there is another rejection nowadays, more and more it's when. Because after there was a case, a case in Supreme Court where they say, especially in the software, in the software world, you cannot patent, just patent software, in other words, because you cannot just come and get a patent for software and so that's called. That's another rejection, nowadays referred to as 101 rejection. Another rejection, nowadays referred to as 101 rejection. For those, uh, who know what that means, that means your software is is not accepted, it's rejected.

Speaker 2 16:54

Of the clarity let's kind of segue over to business and strategy. What should uh startup consider patents early and why are the risk if they don't?

Speaker 1 17:08

Yeah, well, very good question. Now again, as we indicated, that a patent provides you with a monopoly, and so, as you spend money, time and effort to come up, to come to the market with a product, you would not want someone else to have had this monopoly. And here you are at a very later stage, you find out that, oh, the product that I thought I could use, or I have, I no longer can do so because someone else has a patent. So, before you do anything else, you should invest in a patent. Not only that, the other reason is because the patent itself and by itself, even if you do not proceed to manufacture the product that you've invented, you can sell the patent or you can license the patent. Yeah, that is a reason why startups should really, at the very early stage, look to see if their idea is patentable.

Speaker 2 18:23

That's a perfect segue to the next question. You could identify it as another asset that you could license out or sell it as a separate entity. How else do patents add value to a business, especially when raising capital or seeking acquisition?

Speaker 1 18:37

Well, again, the main way is because you have a monopoly that allows you to keep others from that space. Now here is another thing that you can do in that area is one patent sometimes in itself is not sufficient. It all depends on the area and the segment. Let me give you an idea. At some point you may not be old enough to remember tubes right. All the radios, amplifiers, everything else used tubes, right, and we went from tubes to a transistor, and so that's, in other words, it's very innovative.

Speaker 1 19:39

There is no one else out there in that space. You can afford to just say, well, okay, one patent is sufficient for me, but in a crowded space you may have to obtain other patents right to, kind of again, when we go back to the house, the perimeter, to make sure that you cover all your perimeters. So that's again a reason why you may have to have what we refer to as a patent strategy. So you sit down, you analyze your market space and you determine if you need to have what's referred to as a family of patents that cover the whole aspect of your product.

Speaker 2 20:22

So it gives like a protection, like layers of protection how do you protect? Intellectual property when working with manufacturers overseas. I know a lot of people do the account e-commerce nowadays, so what are some practical ways to protect?

Speaker 1 20:36

well practical ways you have, for example, uh, you have the pT, which is for European countries, so you can, after you, apply in the United States. You can then request that the PCT provide you the same protection, because a patent is really local in terms of the US, provides you with a patent that doesn't protect, with a patent that doesn't protect you in Canada, that doesn't protect you in Europe, it doesn't protect you in Brazil or Africa or China. You have to go to each of these places and obtain protection based on your US patent.

Speaker 2 21:20

And this would be a perfect segue then. So what are some strategies for building a patent portfolio instead of just filing a single patent?

Speaker 1 21:28

Again, is based on the market. The market space that you are in will determine the what it is that you you do, you know to to build up a portfolio of patents. And again, if you go in China nowadays being a quarter of the world's population, so you may want to target China and so that will then you will have to specifically go after what the Chinese market wants and then obtain a family of patents for that purpose.

Speaker 2 22:08

And how does patent law differ between the US and other countries, for example?

Speaker 1 22:16

Well, the difference. I think maybe the difference may be a lot more between the US and China, but between the US and European. It's just in how you present the application itself is really the difference. But otherwise, everybody agrees that if you have an idea and no one else has it, then it should be patented. So it's pretty much universal. Now there is one point we should add. By saying universal At some point, the difference was that the entire world was when.

Speaker 1 23:02

The entire world used a different system than the united states did. The united states had a, a system where that it said, the first to invent is the first to get the patent. But in 2013, uh, it changed because the the whole world was on the system where the first to file gets the pad, whoever files first gets it. Well, as the world was on, I mean the US was on whoever invents first. But in 2013, about 12 years ago, the US switched over to whoever files first gets the pad, which makes a very, very big difference, especially with startup, which we didn't mention. You don't want to wait, because if you wait, someone else may get to the patent office before you, and sorry.

Speaker 2 23:57

That's why we've got to hire an attorney like you. Thank you. That's a selling point alone right there. With rapid innovation in AI, biotech and software, how is patent law evolving?

Speaker 1 24:10

All right, right now, as far as AI is concerned, ai cannot be an inventor. You can use AI to invent, but it has to have some human intervention. So AI is just a tool, just like any other tool that you use right now. So, and we'll see and see if that changes.

Speaker 2 24:40

How do you think the rise of patent trolls companies that buy patents just to sue others? What do you think that does to the marketplace?

Speaker 1 24:52

Yeah, it really, because they're not. They just purchase a patent troll only, purchases the patent only to litigate. They don't have any interest in manufacturing the product, in delivering it, in servicing it or anything like that. So you know. Having said that, you can see that they do not provide a new device to society, and so all they really do is making money out of the patent.

Speaker 2 25:27

Yeah, what technology is changing the way patents are searched, filed, enforced? I know you kind of touched on a little bit, but what technology is changing and like how, the whole process basically?

Speaker 1 25:39

Well, ai is changing how things are done In a simple way, very short and sweet. Ai is changing how things are done In a simple way, very short and sweet. Ai changes everything, yeah.

Speaker 2 25:51

What would be the first step as an investor or startup founders should take before contracting a patent?

Speaker 1 25:59

Well, I would say, contact the PAN attorney first. Well, they should just have a clear idea. They have the term sheet, they have all sorts of other things that they have out there, they have a clear idea as to their goal and objective and they have a business plan and all of that. Then they contact the patent attorney.

Speaker 2 26:25

Perfect. What are the biggest mistakes entrepreneurs make in the patent process?

Speaker 1 26:32

Biggest mistake entrepreneurs make in the patent process Biggest mistake is to wait too long, especially in the examination process, because, remember we said that if you do not agree with the examiner, you can always appeal the examiner's decision, but that takes a long time and the patent has a limited life, because once the patent is issued, then technology advances. Now it used to be 1.5 years. There is a change, technology changes. I don't know with AI how long it is now. As you can see, your patent is quickly outdated during the examination process, and so you may want to be a lot more pragmatic than that and just say give up some territory, like you were saying before. Let's draft our patent very narrowly so that we can get out of the system and so we can benefit from what the patent allows us, rather than staying too long in the examination process.

Speaker 2 27:54

Yeah, that's a good point. I think it's kind of fascinating to see how AI has expedited the process. I bet it's a few months compared to a year and a half. You can get faster the process. I bet it's a few months compared to a year and a half.

Speaker 2 28:05

You can invest in that Even though I was, I saw something online that said that the college curriculum is outdated by the time the books are printed. Okay, in the current environment we live in, the books they're buying and are trying to resell, they're just selling old information. So, because everything's evolving so fast and it's just crazy times we're in, can you?

Speaker 2 28:26

share an example of a client success story where patents made a huge difference. I'm sorry, what was the game Without naming names? Can you share an example of a client success story where patents made a huge difference in their business?

Speaker 1 28:40

Yes, made a huge difference in their business. Yes, I had a client who and in fact it was a design patent for that matter and he said he came to us and he provided us with his business plan and his objective and we recommended that he should. At the time you could ask the Patents Office for acceleration to accelerate the examination process and obviously you pay a fee for that and you get your. So he obtained his patent, his design patent, under about just about under a year and and so right there and right there he I think he knew at the time there was one of those big names that was infringing on his patent and so with with the patent on him, he he went and litigate, he his, his patent, it was that's. It was. That was a huge difference, that made a huge difference in his business. He didn't for the amount of money that he spent in getting the patent as soon as possible versus the benefit he's getting from stopping those big names out there from making his product. I think that made a very big difference.

Speaker 2 30:02

Yeah, it's priceless. He either had a business or nothing, because you know the big one. So, and what's? What's? The typical length is? He's, like I know, various, based on how many uh, inquiries are coming as up, typically a year and a half, so it's expedited by like six months. Is that kind of give or take?

Speaker 1 30:17

uh, give or take nowadays again, like, just like we are saying, since there's been so much change with AI and I haven't done an accelerated examination lately, so the one I did, like I said, was about under a year, close to about a year. So it may change now, but I don't know by how much.

Speaker 2 30:38

Perfect. What's the most rewarding part of your work as a patent attorney? Probably stories like that, yeah.

Final Advice and Contact Information

Speaker 1 30:46

And the most rewarding part is really when someone presents an idea and now you kind of counsel them to do it this other way and you provide them with ideas on how to make their invention a lot better. But you can never be an inventor, and at times a person would come to you with an idea that was far away from what it should be, and you sit them down and you say, well, if I were you, this is how I would do it. But now here you playing the role of an inventor, because you are based on the idea that they first started out with. Then the end product really changed tremendously because you've provided them with counsel and guidance as to how to complete the invention.

Speaker 2 31:45

Yeah, this would be a perfect segue then. So if somebody is listening because you work with a lot of different inventors and startup founders has an idea but doesn't know where to start, what advice would you give them?

Speaker 1 31:57

Has an idea, doesn't know where to start. I would say just do a Google search. Know where to start? I would say just do a Google search, a very quick Google search, and see if there is anything remote to your idea out there. That gives you a head start to know what to do next. Again, it doesn't have to be rocket science. It can be very, very, very, very, very simple.

Speaker 2 32:29

Love it. Yeah, I mean, we have a lot of tools and resources to get incredible data ahead of time, so we know what we have and, especially as we as we wrap this up, patents are, like, literally one of the most important things and people's businesses and a lot of things and people's businesses and a lot of people. It's something that a lot of people overlook. How many, how many businesses do you see that you think are overlooked? Like, when you're running some of these businesses, do you have like a number you know? Is there like an entry number that don't have it, or do you know offhand? I know it's kind of a random question, but I was just curious.

Speaker 1 33:02

I don't know of him, but what I know is there is a reason why IBM has so many patents, there is a reason why Samsung has so many patents, and there is another reason why Apple has so many patents, and even, for example, if you take Uber, there is a reason why they have so many patents. There is a reason why they have so many patents, and so that's why startups, especially startups, should really start with seeing, or to determine, whether their idea can be patented or not.

Speaker 2 33:38

Yeah, that's a great way to wrap it up. How can people get in touch with you or learn more about protecting their IP?

Speaker 1 33:47

They can look me up. It's coffeelawcom C-O-F-F-Y-L-A-Wcom. I'm on LinkedIn. They can find me there as well, so it's very easy. Or, if you can Google my name, you should be able to find me.

Speaker 2 34:02

Perfect. Well, thank you for your insights and your time, manos. Thank you very much, yep. Thanks for giving some great insights on that Council. On Commentary podcast about patent law.

Speaker 1 34:12

Thank you, my pleasure.

Speaker 2 34:16

Bye-bye. Hey, it's Jonathan. Make sure to download Listen Weekly as I bring the top lawyer guests sharing their best insights, providing exclusive resources and most actionable advice. Finally, I get a lot of people asking me to help them one-on-one. Yes, I can, but it's very limited. Go to revenueascendcom for lawyer Google Ads, seo and CMO consulting For commercial real estate investing. Go to midwestparkcapitalcom and those looking to invest in service-based business roll-ups go to businesscashoutcom and those that can invest in service-based business roll-ups go to business cashoutcom. And finally, get podcast bookings a top podcast guesting tour agency. All links are included below. Please like, comment and share this podcast with your friends. Thanks for listening.