September 27, 2024 • 28 mins
Say hello the exceptional Emmanuel Coffy! He is a patent attorney and will be talking about why it is so important as inventors to have patents!
Listen to the audio version of "The Inventress Podcast" on Apple Podcasts, Google Podcasts, Spotify, iHeart Radio, and other major podcast platforms by visiting this link: theinventresspodcast - Listen on YouTube, Spotify - Linktree and don't forget to rate, review and subscribe wherever you listen.
Follow "The Inventress" on social media:
Lisa Ascolese
lisaascolese
@the_inventress
Have a new product or idea and need help? Book a consultation with Lisa Ascolese "The Inventress" and take your product from concept to fruition. Email Lisa@InventingAtoZ.com or visit www.InventingAtoZ.com
Listen to the audio version of "The Inventress Podcast" on Apple Podcasts, Google Podcasts, Spotify, iHeart Radio, and other major podcast platforms by visiting this link: theinventresspodcast - Listen on YouTube, Spotify - Linktree and don't forget to rate, review and subscribe wherever you listen.
Follow "The Inventress" on social media:
Lisa Ascolese
lisaascolese
@the_inventress
Have a new product or idea and need help? Book a consultation with Lisa Ascolese "The Inventress" and take your product from concept to fruition. Email Lisa@InventingAtoZ.com or visit www.InventingAtoZ.com
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Transcript
Episode Transcript
Available transcripts are automatically generated. Complete accuracy is not guaranteed.
Speaker 1 (00:05):
Hi everybody. This is Lisa Askles, the Inventress. I'm the
CEO and founder of Inventing a to Z and here
we are on my podcast, The Inventress Podcast. And you know,
if you're watching the podcast, I always have very very
interesting guests on. Well, today I'm very very proud to
introduce you to Emmanuel Coffee. He is the CEO, founder
(00:25):
and attorney esquire patent attorney, trademark attorney. Please meet Emmanuel.
Speaker 2 (00:32):
Good afternoon, Good afternoon. How are you.
Speaker 1 (00:36):
I'm great, Thank you, thank you so much for joining
us on the podcast.
Speaker 2 (00:40):
Sure, it's my pleasure to join you.
Speaker 1 (00:42):
So I did my mini introduction and there's a lot
more to say about you. So let's talk about you.
Let's talk about your practice. So did I get it wrong,
wrong or right correct? I'm hoping it was correct coffee
or koffee coffee?
Speaker 2 (00:57):
That's that's fine.
Speaker 1 (00:58):
Okay, good, okay, good good good?
Speaker 2 (01:00):
Yeah.
Speaker 1 (01:01):
So yeah, so let's talk. So let let's talk about
how long you've been in practice, where your practice is,
and what you do and what differentiates your practice from
any other patent attorney and trademark attorney.
Speaker 2 (01:12):
Oh great, thank you again.
Speaker 3 (01:16):
It's a pleasure of being here with you today. I
started out as an engineer. I have like nineteen years
of engineering experience. And then at a certain point back
in two thousand, they were outsourcing and I was getting older,
and they wanted a new engineer. And I said to myself,
(01:36):
what am I going to do? I need to get
into something that well, my gray hair is valued. And
so I thought to myself and I said, ah, okay,
with a background in engineering, I can become If I
become a patent attorney, take the patent test, then I can.
(01:59):
I'm sorry, if I become an attorney, take the patent test,
then I can become a patent attorney.
Speaker 2 (02:04):
And so did I. Uh and uh, I went to school.
Speaker 1 (02:09):
Wait a minute, so this was you said in two thousand. Right, Okay,
so in two thousand you decided to become a patent attorney.
You were an engineer prior, so you went to law school.
Obviously you went to law school. Right, you took the right,
you passed the bar. Okay, you skipped over all that.
I went from being an engineer to a patent attorney.
Speaker 3 (02:27):
Okay, okay, sorry, Well I love it. And one thing
is doing all the time that I was. I attended
law school at night, mind you, because during the day
I was working as an engineer and going to school
at night. Uh, law school at night. So it took
me four years rather than three years because I was
(02:50):
I was doing it on a part time basis and
also going doing summer time, so I had no vacation
for four years straight. And and then after passing the
regular ball, then you have to take the patent ball.
So I had to do all of that, and by
two thousand and six, I believe that I'm sorry. By
(03:12):
two thousand and eight is when I closed everything and
became a partner attorney. But meanwhile I couldn't find anyone
to train me, because no one wants to train you.
You want to be a partner, you good luck. So
I said, okay, what am I going to do? I
(03:34):
went to work for the US government as a patent examiner,
so I spent two years there. All of that, now,
looking back, really differentiates me from your your regular patterner attorney,
because not everyone had such a long career as a
as an engineer. No, they did, they work for the
(03:54):
patents office. And added to that, I'm also an inventor.
I have my own invention, and you know, I'm an
author I would have booked, so all of that put
together would differentiate me from from your regular.
Speaker 2 (04:09):
Pat and attorney or IP attorney for that man.
Speaker 1 (04:14):
Yeah, no, that's very interesting. So so you did your
engineering at the United States Patent Office USPTO. That's where
you're practicing, is that?
Speaker 3 (04:24):
That's that's where I that's where I practiced a patent.
Speaker 1 (04:28):
Block pet law as well. Okay, and I say this
because you know, I mean they're they're engineers that are
involved with you know, us PTO.
Speaker 2 (04:36):
As well, so right right as examiners.
Speaker 1 (04:39):
As exactly exactly as examiners. No, that's very very interesting,
and many people don't know that about when you're getting
a patent. How important engineering is, right, your your engineer
drawings or your mechanical drawings, when it comes to developing
a product and having USPTO examine it like you were doing.
Speaker 3 (04:59):
Right, right, you need to be able to understand the inventor,
the inventor. You need to be able to communicate and
understand the inventor so that you can properly claim their invention.
Speaker 1 (05:13):
That's a skill set. That is a skill set I
have to say because it's I explained to my clients
that it's a it's you need to explain it to
the patent attorney, right, How's the attorney has to understand
you and what your product is in order to speak
the proper language to the examiner, right in right, in.
Speaker 3 (05:37):
Order to speak the proper language to the examiner exactly
yes to the examiner.
Speaker 1 (05:42):
And kN Let's talk about that a little bit, because
I think most people don't get that part. You know,
we have. I've worked with many different patent attorneys. So
working with with patent attorneys, they will send their information
to the examiner. But what does that mean? What does
that mean to anybody? What does that mean into anybody
who has a product, who has who has applied for
(06:03):
a patent and then they get rejected. So let's talk
about the examiner piece first, if you don't mind explaining.
Speaker 3 (06:08):
That, Okay, not at all, and if if we may,
when I'd like to preface that with this. In the
United States, we used to have the patent system used
to be a first to invent, versus now after twenty thirteen,
it's now a first to file. The entire world was
the first to invent, I mean, sorry, the entire world
(06:31):
was first to file, whereas the US was first to invent,
and now from twenty thirteen forward we are our.
Speaker 1 (06:39):
First to file isn't meaning okay.
Speaker 3 (06:44):
Meaning whoever files the pattern the plant's office first gets it.
So it's referred to as a race to the patent's
office because you know, if you blank for a second,
because what happens is that two people may have the
same idea at the same time. Uh huh, right, and
(07:04):
then the one who's diligent about getting the application on
file will be doing.
Speaker 1 (07:10):
To get it, you know what. And great minds do
think alike, right, Yes, you know that's when so many
people out there say, somebody stole my idea? I did you?
Did you tell anybody about it? No? I thought about it.
The same things happen throughout our world, all over the
(07:30):
world for everybody, right, things and storms happen, Electricity goes out,
and everybody starts thinking the same way, I need to
invent something to help if my power goes out, if
we're flooding, I need to invent something. So this is
where great minds think alike. So I love the fact
that you're explaining this. So first to file, first to file,
(07:52):
So we got to hurry up. When you get that idea,
you better hurry up and file it because if you're
not first to last.
Speaker 3 (07:59):
Right, if you're at first your last right, and once
you file there, you are allowed one year to perfect
your invention because you you know, you come up with
an idea, it's not it may be a very rough idea.
You don't have all the things out yet. So you
file your provisional and they give you one year to
(08:21):
file the non provisional. This is the the provisional is
not formal, but the non provisional is very formal in
terms of drawings, like you were saying, as a very
formal process. So you are allowed one year to for
to do your R and D or to do all
the things that you need to do in order to
come up with a with a product, and then so
(08:42):
that you can file your non provisional application which will
then m HM, which will then become if allowed or
when allowed, will will will become your your your your parent.
Speaker 2 (08:56):
All right.
Speaker 1 (08:57):
So I have a question for you that everybody is asking, right,
So when you're filing a non provisional patent, is it for?
What is it for? Is it for? Utility. Is it
for design or is it just one year to have
this process the product in at us P t O.
I want to ask you two part questions. Is it
(09:18):
ever looked at, opened and examined right or does it
just sit there for one year filed under a number
until you decide in that within that year one year
period to ask the question forward right with a pat
will utility or design?
Speaker 3 (09:39):
Great question? Yes, great question. The provisional is not looked
at or examining. It's just a police holder providing you
priority to when it was received at the pad serf
mm hm. But it's not examined, none of that, and
that's why it's really Again, it's not formal. It's none formal.
You can take all your or whatever it is, you
(10:02):
throw them all together and then you filed it. Although
that's not recommended, but you can do that if you wish,
because it's not it's not formalized, but it's not examined either.
And you you you mentioned something which is very important,
being a design pattern. A design pattern can claim priority
(10:22):
to a provisional application.
Speaker 2 (10:25):
So both of.
Speaker 1 (10:25):
Your utilities say that again, So okay, you said a
design pattern can do?
Speaker 3 (10:31):
What can claim priority to provisional application.
Speaker 1 (10:37):
Okay, okay, so kind of utility mhm, right, So does
it roll into it? So when you file a provisional pattern, right,
the provisional pat or non provisional pattern, the one year
pan that you submit to the patent office. Now in
that one year, so September one, twenty twenty three filed
(10:59):
right now with September just say September second, or September one,
twenty twenty four, or let's make it earlier. Don't wait
till the last minute, everybody, don't wait. So August fifteenth,
Now we're coming up to the date. Does that patent
that's sitting in the patent off that nobody opened? How
(11:22):
is that? How do I even word this? If we're
doing a design pattern, how does that affect the provisional
pattern that went to the patent office that nobody opens?
Speaker 2 (11:31):
Okay?
Speaker 3 (11:32):
Now, the design patent again would refer to the provisional
application to the date that provisional application was first filed,
and then when the patent is issued, it will it
will claim priority to that day. Why because if someone
else has the same design and it's after your your
(11:53):
the date of your priority, then then that person that
that that that pattern is not valid.
Speaker 2 (12:05):
And it may happen, because it may happen.
Speaker 3 (12:08):
And that's why sometimes people ask why after I get
up my patent is issued, I still need to do
what's they called freedom kind of jobbing the gun. But
why do I have to do what's called freedom to operate?
The reason why it's because your partent, although issued, may
not be valid because there was a period of time
when there were a lot of applications sitting in the
(12:29):
parent's office that were.
Speaker 2 (12:30):
Not looked at.
Speaker 3 (12:32):
Okay, and they were confidential as well, that's the other
word too, So they were confidential as well. So it
may so happen that two patents, how you should well
one invalidates the other because maybe have a few days
by a few.
Speaker 1 (12:46):
Days, all right, So this is here's a question for you.
So that the provisional pattern is sitting in the patent office, right,
the person who did this provisional pattern doesn't do anything
about it. And then so this is what you're saying,
I think the following day when it's one year to
the day, but the next day another person could come
(13:07):
along with the utility pattern and knock them right out
of the water, right, So the provisional pattern, the one
year provisional pat that was supplied for nobody does anything
about it. Because if you don't do anything about it,
what happens.
Speaker 3 (13:22):
Well, if you don't do anything in the one you expire,
although there is a two month kind of the allow you,
but let's just say you don't do anything within the
then then that's it.
Speaker 2 (13:32):
It's no longer valid.
Speaker 1 (13:34):
So you're done. So the person who the person who
comes along out of nowhere with this utility pattern or
design pattern knocks you right out of the water because
you never did anything in that one year period.
Speaker 2 (13:45):
Because you never did anything in that one year period.
Speaker 3 (13:48):
Okay, Well, you also mention that you shouldn't really wait
close to the win you because after you get your
initial idea, and again once you know that you need
to get to the patent office as soon as possible,
you're not gonna wait.
Speaker 2 (14:02):
So you're going to go to.
Speaker 3 (14:03):
The pands office file your application and then maybe and then,
like I said, continue to work on your on your
idea to make it perfect. You may have to do
some prototyping and things of that nature. So and let's
say three months before the one year you should start
filing your application because that process in itself takes some time.
Speaker 1 (14:25):
Right, right, So don't wait, don't wait till the last minute.
But you're classifying. I love the clarification, and it's still
very it's not so simple for people to understand if
this is not what they're doing, right, But thank you
for clarifying. Now I want to go back to the examination,
the examining. All right, let's clarify to everyone out there
(14:48):
that you know what that all means when they are
providing in fordocumentation to you or directly to the USPTO.
You know, they could be applying for a pattern on
their own. I never re mend it because it's it's
it's a lot of work, and and if you're not
a patent attorney or an attorney, it's hard to understand
the language. But anyway, so let's talk about how important
(15:09):
that is the examination, the conversation that needs to happen
between the patent attorney work to the examiner, and the
client developing the product.
Speaker 3 (15:22):
Okay, now do you want to put a time in
on it? And is it is it after the provision
obligation was filed?
Speaker 1 (15:30):
On the conversation? How important the verbiage? What has to happen.
So Sam, Sam inventing a hair brush. Right, I'm inventing
a hair brush. And I'm coming to you and saying, so,
this is a hair brush. It has five bristles, right,
it has five bristles, and I want this protected, so
how and and and that's that's and then it has lights.
(15:53):
Then it has a button that lights up. That sounds
like a really good investors it is, It sounds right. Everybody,
forget that you're studying NDA, everybody, everybody, So now is
this enough? I'm telling you this? What else do I need?
I'm telling you, Okay, this is all right, This is
all I have.
Speaker 2 (16:13):
This is all like, this is all you have? Fine?
Speaker 3 (16:16):
Here is this is what I do. I do have
what's called an invention disclosure. From that, I provide the
inventor for the inventor to describe the invention, including any
kind of drawings or or any kind anything that you
have that can describe your your your invention, and and
so and what I do is I do what's called
a very quick search low you know, low hanging fruits,
(16:41):
anything that would look like your your your invention out there.
And then when when when we have an interview with
the inventor, then we are able to speak with the
inventor in a in a more intelligent manner, in order,
like you said, to tell to tell him or her, well,
there is something out there that kind of look like yours.
(17:05):
But if you do this, maybe, if you can, if
you change the shape, if you add another feature, if
you do do this or that, then maybe we can
we can make it work. And then she would go
back to the drawing board and and and change the invention. Okay,
because uh, and when you apply to the parent's office,
(17:30):
you need to have drawing and they have to be
formal drawings. Like I said before, you need to have
a description of what the item does. This is for
utility application. And then at the end you also have
the claims.
Speaker 2 (17:44):
Uh. The claims are really what mattered.
Speaker 3 (17:47):
The claims are your like your boundary if you have
a house, the boundary to your property or the claims.
Speaker 2 (17:54):
So very crucial, very important that the claims are right. Uh. Uh,
they don't.
Speaker 3 (18:02):
You don't want them to be too broad, then you
don't want them to be too narrow either. So you know,
the ideal is to have the perfect claims for for
for for your application. So those are that's the language
we need to to speak with the examine claims.
Speaker 1 (18:19):
Specification drawing really important, very important, right, because if you're
leaving things out, and the examiner says, for my brush,
for example, isn't that too little? That's not enough information? Right?
I would think that's brush needs to be able to
do something else.
Speaker 2 (18:35):
Right.
Speaker 1 (18:35):
You can't just have five bristles and light up and
then what because there's probably there could be something similar
on the market, right, or not on the market that's patented, right,
there could be So what do I need to do?
What do I so I need to do? Are you
going to say to me, Lisa, this has come on
five bristles and a light. Can't you come up with
something better or different or in addition to maybe whistles?
(18:57):
I don't know what else? Do I need to differentiate
it more?
Speaker 3 (19:02):
You need to differentiate as much as possible, because the
examiner is gonna go and and it's gonna go out
there and look for anything that is close to yours.
And the examiner has access to a huge array of
databases of all over the world of products that people
are invented, and they can't use that in order to
(19:23):
reject yours, So you don't want that.
Speaker 1 (19:26):
So this is this is now this spins into my
other question. So I'm using a patent attorney, right, So
I go to the patent attorney. I give them the
five bristles and a light, and that patent attorney just
submits that knowing I'm not saying knowing. Nobody's doing anything
intentional because whatever the information you give to them is
what they're applying for.
Speaker 2 (19:44):
Right.
Speaker 1 (19:45):
So, now you've applied for this pattern, and it's only
these two things that this hairbrush does. The examiner says,
this is you know, now it's gonna cost you more money. Right,
It's gonna cost more money because it's rejected because we
didn't have brought enough claims to our hair brush.
Speaker 2 (20:03):
Right, and here and here is the danger. Listen. The
danger is that what is a pattern?
Speaker 3 (20:09):
A pattern is a monopoly for twenty years that no
one else can do anything like yours. You are the
only one with this one product. It's a monopoly. But
in exchange for the monopoly, you need to you need
to educate the public about your product. So you need
(20:30):
to provide enough explication too, so that anyone out there
can make your can make or use it after after
your twenty year monopoly period. So that's how science has advanced.
And then the public domain becomes a lot isn't riched
(20:53):
by by by providing you the monopoly in exchange for
you telling us how to use your.
Speaker 1 (21:01):
So you need to do it, go ahead, I'm sorry.
Speaker 2 (21:04):
You need to do it in such.
Speaker 3 (21:05):
A way that it's fully detailed, because otherwise the examiner
may say, oh, you know, someone out there would not
be able to use your product based on this description
that you provide.
Speaker 1 (21:18):
Oh, so we're showing, we're explaining the use of the product.
So not only does this hair brush have five bristles
and light up, they're made out of silk. They're made
out of silk, and it detangles and it squirts out
a conditioner and it does all of these other things,
(21:39):
and what it does for the hair? So what does
it do for the hair? And why is it important?
Speaker 2 (21:43):
Right? Right?
Speaker 1 (21:46):
Okay?
Speaker 3 (21:47):
And also we might as well point out that you know,
it doesn't have to be a rocket to the moon,
because you know, one example, one example that I.
Speaker 1 (21:58):
Always say that next I was gonna say, and the
hairbrush flies to the moon.
Speaker 3 (22:06):
If we take to post the notes for example, right
posting notes, three am has.
Speaker 2 (22:15):
That and how did they find it? It was my
steleing deputy.
Speaker 3 (22:19):
They were looking for something else and then they found
the glue for posted notes and then they patented.
Speaker 2 (22:26):
So you know, it can be as simple as that.
Speaker 1 (22:29):
Isn't that something right? So it doesn't have to be
something so crazy that it's it's just something that it works.
It works, and it works for the world, and that's
great information. So we'll have a question for you about
now I'm jumping around, but the twenty years, So what
happens on that twentieth year? It's twenty years later we
created this product. Now, are there notices that go out
(22:50):
to the person who in the inventor it's now you're
heading up to your twentieth year or do we just
have to know it's been twenty years? You better either
do you reapply, you reapply for the patent, create something
else or what happens after that?
Speaker 2 (23:06):
Yeah? Wow? Good?
Speaker 3 (23:07):
But now there is a maintenance fee that is paid
every six years, I believe after your patent is issued, So.
Speaker 2 (23:16):
Six years, six twelve, eighteen, then you would know.
Speaker 3 (23:20):
You would know because you've paid yourtenancy and you know
hope this is these are my last two years. After
that my patent expires, I have no it goes to
the public domain. And as we were saying before, it
now becomes part of the public domains. So like you
said before, either prior to that, you would you would
find something that you can add to it, make it better.
(23:45):
Maybe now there is no technology out there that and
then you've come up with something different.
Speaker 2 (23:50):
But otherwise your patent is expiresed, So it's done.
Speaker 1 (23:54):
It's over with, unless you decide to do something else
and lessing very same patent.
Speaker 3 (24:02):
Right, No, no, no, that that patent expires after twenty
years over with.
Speaker 1 (24:08):
Okay, So I make a new brush and the other
the new brush I made now has something that hangs
off of it. Right, So it's something that hangs off
and spins, so that I'm recreating the same brush. See,
but you know what the problem is, you know what
I think? Now the brush has been out for twenty years, right,
(24:28):
the brush has now been around for twenty years, and
people think it's a wonderful idea. Now the whole world
is probably going to come up with an idea like
the brush, right, because it's been around for twenty years,
right right, right.
Speaker 3 (24:43):
So in the meantime, you should be, like you said,
you should be working hard to come up with another feature,
adding a different feature to your brush, or do something
else so that prior to the patent being expired, or
you can file for a new so that you keep
your And there are other things that people do out
(25:04):
there as well. For example, when it comes to if
you have a cute name for your brush that you
want to trademark the name, right, that's another thing. A
trademark doesn't expire.
Speaker 2 (25:17):
And if you're using this.
Speaker 1 (25:18):
Wait a minute, A trademark does not expire.
Speaker 2 (25:21):
No, a trademark does not expire.
Speaker 1 (25:24):
News, breaking news, everybody. A trademark does not expire. No,
I don't. I didn't know that. I didn't know that
it does inspire.
Speaker 3 (25:36):
But no, it does not expire unless you're allowed to
expire by not paying your fee.
Speaker 2 (25:41):
If what is that?
Speaker 3 (25:42):
If we five years or something, okay, but it doesn't
expire forever.
Speaker 1 (25:49):
Great, great, great information. I love that. So you know what,
So this this leads me to all of these brands.
Just say, uh, let's think I just did a tie
tie detergent right tie trademark right tied as a trademark.
Speaker 2 (26:06):
M hm.
Speaker 1 (26:07):
So the name is not going to go away ever
go away. But they have what the ingredients in the
bottle is right? So new and improved? Do they patent
what is the patent process of a liquid detergent? Right?
Speaker 3 (26:21):
So it could be it could be patented as a process,
like you said, But what.
Speaker 1 (26:26):
Happens after twenty years with do they is this work?
Speaker 3 (26:28):
You know?
Speaker 1 (26:29):
You see new and improved liquid? Is that why they
do new and improved Because.
Speaker 3 (26:33):
That's why they do new and improved liquid because they
now come up with a different process.
Speaker 2 (26:38):
But then again, then again, and this is.
Speaker 3 (26:41):
Where it kind of it's kind of not convoluted in
the sense they could keep it as.
Speaker 2 (26:48):
A trade secret as well, got it.
Speaker 3 (26:53):
You know, they don't have to patent it, just like
cook the recipe for coke is a trade secret. It
has been for falling you so have many years.
Speaker 1 (27:03):
So the trade secret no one knows about. The trade secret.
That's a whole nother that's a whole nother process. That's
a that's all so exciting, very exciting. So I mean,
I so appreciate you coming on and please tell everybody
how they can find you your if you're If you
(27:23):
have social media handles, please express that, tell us how
we can find you and share. Thank you for sharing
all of your information.
Speaker 3 (27:30):
Thank you so much. They can find me on LinkedIn
just my name Emmanuel Coffee c O f f Y.
My my website is Coffee Law c O f f
Y l A W dot com. And they can always
google the name as well. Emmanual E M M A
(27:50):
n U E L c O f f y and
they can find me that way. They can also call Lisa.
Speaker 2 (27:58):
You certainly can't.
Speaker 1 (28:00):
This is so enlightening. I love to hear from different
patent attorneys, regular attorneys because it's always interesting for people
to learn and understand, and everybody has a different take
on it or a different way is explained. And so
I really appreciate your explanation on the engineering piece and
and just you know, examining the examiners who take a
(28:22):
look at your product. This was all so important to
all of our my patent my patented clients, non patented especially,
and people who are out there looking to get started
in this industry. So I really appreciate it. So thank
you so much for being on our podcast today and
look forward to seeing you again. Will you come back again?
Speaker 3 (28:43):
Thank you, Lissa. I certainly will. Okay, I certainly will.
Once you give me the invitation.
Speaker 2 (28:49):
I will.
Speaker 1 (28:50):
You got it, okay, Stan, thank you so much and
we'll see you next time.
Speaker 2 (28:54):
Bye.
Hi everybody. This is Lisa Askles, the Inventress. I'm the
CEO and founder of Inventing a to Z and here
we are on my podcast, The Inventress Podcast. And you know,
if you're watching the podcast, I always have very very
interesting guests on. Well, today I'm very very proud to
introduce you to Emmanuel Coffee. He is the CEO, founder
(00:25):
and attorney esquire patent attorney, trademark attorney. Please meet Emmanuel.
Speaker 2 (00:32):
Good afternoon, Good afternoon. How are you.
Speaker 1 (00:36):
I'm great, Thank you, thank you so much for joining
us on the podcast.
Speaker 2 (00:40):
Sure, it's my pleasure to join you.
Speaker 1 (00:42):
So I did my mini introduction and there's a lot
more to say about you. So let's talk about you.
Let's talk about your practice. So did I get it wrong,
wrong or right correct? I'm hoping it was correct coffee
or koffee coffee?
Speaker 2 (00:57):
That's that's fine.
Speaker 1 (00:58):
Okay, good, okay, good good good?
Speaker 2 (01:00):
Yeah.
Speaker 1 (01:01):
So yeah, so let's talk. So let let's talk about
how long you've been in practice, where your practice is,
and what you do and what differentiates your practice from
any other patent attorney and trademark attorney.
Speaker 2 (01:12):
Oh great, thank you again.
Speaker 3 (01:16):
It's a pleasure of being here with you today. I
started out as an engineer. I have like nineteen years
of engineering experience. And then at a certain point back
in two thousand, they were outsourcing and I was getting older,
and they wanted a new engineer. And I said to myself,
(01:36):
what am I going to do? I need to get
into something that well, my gray hair is valued. And
so I thought to myself and I said, ah, okay,
with a background in engineering, I can become If I
become a patent attorney, take the patent test, then I can.
(01:59):
I'm sorry, if I become an attorney, take the patent test,
then I can become a patent attorney.
Speaker 2 (02:04):
And so did I. Uh and uh, I went to school.
Speaker 1 (02:09):
Wait a minute, so this was you said in two thousand. Right, Okay,
so in two thousand you decided to become a patent attorney.
You were an engineer prior, so you went to law school.
Obviously you went to law school. Right, you took the right,
you passed the bar. Okay, you skipped over all that.
I went from being an engineer to a patent attorney.
Speaker 3 (02:27):
Okay, okay, sorry, Well I love it. And one thing
is doing all the time that I was. I attended
law school at night, mind you, because during the day
I was working as an engineer and going to school
at night. Uh, law school at night. So it took
me four years rather than three years because I was
(02:50):
I was doing it on a part time basis and
also going doing summer time, so I had no vacation
for four years straight. And and then after passing the
regular ball, then you have to take the patent ball.
So I had to do all of that, and by
two thousand and six, I believe that I'm sorry. By
(03:12):
two thousand and eight is when I closed everything and
became a partner attorney. But meanwhile I couldn't find anyone
to train me, because no one wants to train you.
You want to be a partner, you good luck. So
I said, okay, what am I going to do? I
(03:34):
went to work for the US government as a patent examiner,
so I spent two years there. All of that, now,
looking back, really differentiates me from your your regular patterner attorney,
because not everyone had such a long career as a
as an engineer. No, they did, they work for the
(03:54):
patents office. And added to that, I'm also an inventor.
I have my own invention, and you know, I'm an
author I would have booked, so all of that put
together would differentiate me from from your regular.
Speaker 2 (04:09):
Pat and attorney or IP attorney for that man.
Speaker 1 (04:14):
Yeah, no, that's very interesting. So so you did your
engineering at the United States Patent Office USPTO. That's where
you're practicing, is that?
Speaker 3 (04:24):
That's that's where I that's where I practiced a patent.
Speaker 1 (04:28):
Block pet law as well. Okay, and I say this
because you know, I mean they're they're engineers that are
involved with you know, us PTO.
Speaker 2 (04:36):
As well, so right right as examiners.
Speaker 1 (04:39):
As exactly exactly as examiners. No, that's very very interesting,
and many people don't know that about when you're getting
a patent. How important engineering is, right, your your engineer
drawings or your mechanical drawings, when it comes to developing
a product and having USPTO examine it like you were doing.
Speaker 3 (04:59):
Right, right, you need to be able to understand the inventor,
the inventor. You need to be able to communicate and
understand the inventor so that you can properly claim their invention.
Speaker 1 (05:13):
That's a skill set. That is a skill set I
have to say because it's I explained to my clients
that it's a it's you need to explain it to
the patent attorney, right, How's the attorney has to understand
you and what your product is in order to speak
the proper language to the examiner, right in right, in.
Speaker 3 (05:37):
Order to speak the proper language to the examiner exactly
yes to the examiner.
Speaker 1 (05:42):
And kN Let's talk about that a little bit, because
I think most people don't get that part. You know,
we have. I've worked with many different patent attorneys. So
working with with patent attorneys, they will send their information
to the examiner. But what does that mean? What does
that mean to anybody? What does that mean into anybody
who has a product, who has who has applied for
(06:03):
a patent and then they get rejected. So let's talk
about the examiner piece first, if you don't mind explaining.
Speaker 3 (06:08):
That, Okay, not at all, and if if we may,
when I'd like to preface that with this. In the
United States, we used to have the patent system used
to be a first to invent, versus now after twenty thirteen,
it's now a first to file. The entire world was
the first to invent, I mean, sorry, the entire world
(06:31):
was first to file, whereas the US was first to invent,
and now from twenty thirteen forward we are our.
Speaker 1 (06:39):
First to file isn't meaning okay.
Speaker 3 (06:44):
Meaning whoever files the pattern the plant's office first gets it.
So it's referred to as a race to the patent's
office because you know, if you blank for a second,
because what happens is that two people may have the
same idea at the same time. Uh huh, right, and
(07:04):
then the one who's diligent about getting the application on
file will be doing.
Speaker 1 (07:10):
To get it, you know what. And great minds do
think alike, right, Yes, you know that's when so many
people out there say, somebody stole my idea? I did you?
Did you tell anybody about it? No? I thought about it.
The same things happen throughout our world, all over the
(07:30):
world for everybody, right, things and storms happen, Electricity goes out,
and everybody starts thinking the same way, I need to
invent something to help if my power goes out, if
we're flooding, I need to invent something. So this is
where great minds think alike. So I love the fact
that you're explaining this. So first to file, first to file,
(07:52):
So we got to hurry up. When you get that idea,
you better hurry up and file it because if you're
not first to last.
Speaker 3 (07:59):
Right, if you're at first your last right, and once
you file there, you are allowed one year to perfect
your invention because you you know, you come up with
an idea, it's not it may be a very rough idea.
You don't have all the things out yet. So you
file your provisional and they give you one year to
(08:21):
file the non provisional. This is the the provisional is
not formal, but the non provisional is very formal in
terms of drawings, like you were saying, as a very
formal process. So you are allowed one year to for
to do your R and D or to do all
the things that you need to do in order to
come up with a with a product, and then so
(08:42):
that you can file your non provisional application which will
then m HM, which will then become if allowed or
when allowed, will will will become your your your your parent.
Speaker 2 (08:56):
All right.
Speaker 1 (08:57):
So I have a question for you that everybody is asking, right,
So when you're filing a non provisional patent, is it for?
What is it for? Is it for? Utility. Is it
for design or is it just one year to have
this process the product in at us P t O.
I want to ask you two part questions. Is it
(09:18):
ever looked at, opened and examined right or does it
just sit there for one year filed under a number
until you decide in that within that year one year
period to ask the question forward right with a pat
will utility or design?
Speaker 3 (09:39):
Great question? Yes, great question. The provisional is not looked
at or examining. It's just a police holder providing you
priority to when it was received at the pad serf
mm hm. But it's not examined, none of that, and
that's why it's really Again, it's not formal. It's none formal.
You can take all your or whatever it is, you
(10:02):
throw them all together and then you filed it. Although
that's not recommended, but you can do that if you wish,
because it's not it's not formalized, but it's not examined either.
And you you you mentioned something which is very important,
being a design pattern. A design pattern can claim priority
(10:22):
to a provisional application.
Speaker 2 (10:25):
So both of.
Speaker 1 (10:25):
Your utilities say that again, So okay, you said a
design pattern can do?
Speaker 3 (10:31):
What can claim priority to provisional application.
Speaker 1 (10:37):
Okay, okay, so kind of utility mhm, right, So does
it roll into it? So when you file a provisional pattern, right,
the provisional pat or non provisional pattern, the one year
pan that you submit to the patent office. Now in
that one year, so September one, twenty twenty three filed
(10:59):
right now with September just say September second, or September one,
twenty twenty four, or let's make it earlier. Don't wait
till the last minute, everybody, don't wait. So August fifteenth,
Now we're coming up to the date. Does that patent
that's sitting in the patent off that nobody opened? How
(11:22):
is that? How do I even word this? If we're
doing a design pattern, how does that affect the provisional
pattern that went to the patent office that nobody opens?
Speaker 2 (11:31):
Okay?
Speaker 3 (11:32):
Now, the design patent again would refer to the provisional
application to the date that provisional application was first filed,
and then when the patent is issued, it will it
will claim priority to that day. Why because if someone
else has the same design and it's after your your
(11:53):
the date of your priority, then then that person that
that that that pattern is not valid.
Speaker 2 (12:05):
And it may happen, because it may happen.
Speaker 3 (12:08):
And that's why sometimes people ask why after I get
up my patent is issued, I still need to do
what's they called freedom kind of jobbing the gun. But
why do I have to do what's called freedom to operate?
The reason why it's because your partent, although issued, may
not be valid because there was a period of time
when there were a lot of applications sitting in the
(12:29):
parent's office that were.
Speaker 2 (12:30):
Not looked at.
Speaker 3 (12:32):
Okay, and they were confidential as well, that's the other
word too, So they were confidential as well. So it
may so happen that two patents, how you should well
one invalidates the other because maybe have a few days
by a few.
Speaker 1 (12:46):
Days, all right, So this is here's a question for you.
So that the provisional pattern is sitting in the patent office, right,
the person who did this provisional pattern doesn't do anything
about it. And then so this is what you're saying,
I think the following day when it's one year to
the day, but the next day another person could come
(13:07):
along with the utility pattern and knock them right out
of the water, right, So the provisional pattern, the one
year provisional pat that was supplied for nobody does anything
about it. Because if you don't do anything about it,
what happens.
Speaker 3 (13:22):
Well, if you don't do anything in the one you expire,
although there is a two month kind of the allow you,
but let's just say you don't do anything within the
then then that's it.
Speaker 2 (13:32):
It's no longer valid.
Speaker 1 (13:34):
So you're done. So the person who the person who
comes along out of nowhere with this utility pattern or
design pattern knocks you right out of the water because
you never did anything in that one year period.
Speaker 2 (13:45):
Because you never did anything in that one year period.
Speaker 3 (13:48):
Okay, Well, you also mention that you shouldn't really wait
close to the win you because after you get your
initial idea, and again once you know that you need
to get to the patent office as soon as possible,
you're not gonna wait.
Speaker 2 (14:02):
So you're going to go to.
Speaker 3 (14:03):
The pands office file your application and then maybe and then,
like I said, continue to work on your on your
idea to make it perfect. You may have to do
some prototyping and things of that nature. So and let's
say three months before the one year you should start
filing your application because that process in itself takes some time.
Speaker 1 (14:25):
Right, right, So don't wait, don't wait till the last minute.
But you're classifying. I love the clarification, and it's still
very it's not so simple for people to understand if
this is not what they're doing, right, But thank you
for clarifying. Now I want to go back to the examination,
the examining. All right, let's clarify to everyone out there
(14:48):
that you know what that all means when they are
providing in fordocumentation to you or directly to the USPTO.
You know, they could be applying for a pattern on
their own. I never re mend it because it's it's
it's a lot of work, and and if you're not
a patent attorney or an attorney, it's hard to understand
the language. But anyway, so let's talk about how important
(15:09):
that is the examination, the conversation that needs to happen
between the patent attorney work to the examiner, and the
client developing the product.
Speaker 3 (15:22):
Okay, now do you want to put a time in
on it? And is it is it after the provision
obligation was filed?
Speaker 1 (15:30):
On the conversation? How important the verbiage? What has to happen.
So Sam, Sam inventing a hair brush. Right, I'm inventing
a hair brush. And I'm coming to you and saying, so,
this is a hair brush. It has five bristles, right,
it has five bristles, and I want this protected, so
how and and and that's that's and then it has lights.
(15:53):
Then it has a button that lights up. That sounds
like a really good investors it is, It sounds right. Everybody,
forget that you're studying NDA, everybody, everybody, So now is
this enough? I'm telling you this? What else do I need?
I'm telling you, Okay, this is all right, This is
all I have.
Speaker 2 (16:13):
This is all like, this is all you have? Fine?
Speaker 3 (16:16):
Here is this is what I do. I do have
what's called an invention disclosure. From that, I provide the
inventor for the inventor to describe the invention, including any
kind of drawings or or any kind anything that you
have that can describe your your your invention, and and
so and what I do is I do what's called
a very quick search low you know, low hanging fruits,
(16:41):
anything that would look like your your your invention out there.
And then when when when we have an interview with
the inventor, then we are able to speak with the
inventor in a in a more intelligent manner, in order,
like you said, to tell to tell him or her, well,
there is something out there that kind of look like yours.
(17:05):
But if you do this, maybe, if you can, if
you change the shape, if you add another feature, if
you do do this or that, then maybe we can
we can make it work. And then she would go
back to the drawing board and and and change the invention. Okay,
because uh, and when you apply to the parent's office,
(17:30):
you need to have drawing and they have to be
formal drawings. Like I said before, you need to have
a description of what the item does. This is for
utility application. And then at the end you also have
the claims.
Speaker 2 (17:44):
Uh. The claims are really what mattered.
Speaker 3 (17:47):
The claims are your like your boundary if you have
a house, the boundary to your property or the claims.
Speaker 2 (17:54):
So very crucial, very important that the claims are right. Uh. Uh,
they don't.
Speaker 3 (18:02):
You don't want them to be too broad, then you
don't want them to be too narrow either. So you know,
the ideal is to have the perfect claims for for
for for your application. So those are that's the language
we need to to speak with the examine claims.
Speaker 1 (18:19):
Specification drawing really important, very important, right, because if you're
leaving things out, and the examiner says, for my brush,
for example, isn't that too little? That's not enough information? Right?
I would think that's brush needs to be able to
do something else.
Speaker 2 (18:35):
Right.
Speaker 1 (18:35):
You can't just have five bristles and light up and
then what because there's probably there could be something similar
on the market, right, or not on the market that's patented, right,
there could be So what do I need to do?
What do I so I need to do? Are you
going to say to me, Lisa, this has come on
five bristles and a light. Can't you come up with
something better or different or in addition to maybe whistles?
(18:57):
I don't know what else? Do I need to differentiate
it more?
Speaker 3 (19:02):
You need to differentiate as much as possible, because the
examiner is gonna go and and it's gonna go out
there and look for anything that is close to yours.
And the examiner has access to a huge array of
databases of all over the world of products that people
are invented, and they can't use that in order to
(19:23):
reject yours, So you don't want that.
Speaker 1 (19:26):
So this is this is now this spins into my
other question. So I'm using a patent attorney, right, So
I go to the patent attorney. I give them the
five bristles and a light, and that patent attorney just
submits that knowing I'm not saying knowing. Nobody's doing anything
intentional because whatever the information you give to them is
what they're applying for.
Speaker 2 (19:44):
Right.
Speaker 1 (19:45):
So, now you've applied for this pattern, and it's only
these two things that this hairbrush does. The examiner says,
this is you know, now it's gonna cost you more money. Right,
It's gonna cost more money because it's rejected because we
didn't have brought enough claims to our hair brush.
Speaker 2 (20:03):
Right, and here and here is the danger. Listen. The
danger is that what is a pattern?
Speaker 3 (20:09):
A pattern is a monopoly for twenty years that no
one else can do anything like yours. You are the
only one with this one product. It's a monopoly. But
in exchange for the monopoly, you need to you need
to educate the public about your product. So you need
(20:30):
to provide enough explication too, so that anyone out there
can make your can make or use it after after
your twenty year monopoly period. So that's how science has advanced.
And then the public domain becomes a lot isn't riched
(20:53):
by by by providing you the monopoly in exchange for
you telling us how to use your.
Speaker 1 (21:01):
So you need to do it, go ahead, I'm sorry.
Speaker 2 (21:04):
You need to do it in such.
Speaker 3 (21:05):
A way that it's fully detailed, because otherwise the examiner
may say, oh, you know, someone out there would not
be able to use your product based on this description
that you provide.
Speaker 1 (21:18):
Oh, so we're showing, we're explaining the use of the product.
So not only does this hair brush have five bristles
and light up, they're made out of silk. They're made
out of silk, and it detangles and it squirts out
a conditioner and it does all of these other things,
(21:39):
and what it does for the hair? So what does
it do for the hair? And why is it important?
Speaker 2 (21:43):
Right? Right?
Speaker 1 (21:46):
Okay?
Speaker 3 (21:47):
And also we might as well point out that you know,
it doesn't have to be a rocket to the moon,
because you know, one example, one example that I.
Speaker 1 (21:58):
Always say that next I was gonna say, and the
hairbrush flies to the moon.
Speaker 3 (22:06):
If we take to post the notes for example, right
posting notes, three am has.
Speaker 2 (22:15):
That and how did they find it? It was my
steleing deputy.
Speaker 3 (22:19):
They were looking for something else and then they found
the glue for posted notes and then they patented.
Speaker 2 (22:26):
So you know, it can be as simple as that.
Speaker 1 (22:29):
Isn't that something right? So it doesn't have to be
something so crazy that it's it's just something that it works.
It works, and it works for the world, and that's
great information. So we'll have a question for you about
now I'm jumping around, but the twenty years, So what
happens on that twentieth year? It's twenty years later we
created this product. Now, are there notices that go out
(22:50):
to the person who in the inventor it's now you're
heading up to your twentieth year or do we just
have to know it's been twenty years? You better either
do you reapply, you reapply for the patent, create something
else or what happens after that?
Speaker 2 (23:06):
Yeah? Wow? Good?
Speaker 3 (23:07):
But now there is a maintenance fee that is paid
every six years, I believe after your patent is issued, So.
Speaker 2 (23:16):
Six years, six twelve, eighteen, then you would know.
Speaker 3 (23:20):
You would know because you've paid yourtenancy and you know
hope this is these are my last two years. After
that my patent expires, I have no it goes to
the public domain. And as we were saying before, it
now becomes part of the public domains. So like you
said before, either prior to that, you would you would
find something that you can add to it, make it better.
(23:45):
Maybe now there is no technology out there that and
then you've come up with something different.
Speaker 2 (23:50):
But otherwise your patent is expiresed, So it's done.
Speaker 1 (23:54):
It's over with, unless you decide to do something else
and lessing very same patent.
Speaker 3 (24:02):
Right, No, no, no, that that patent expires after twenty
years over with.
Speaker 1 (24:08):
Okay, So I make a new brush and the other
the new brush I made now has something that hangs
off of it. Right, So it's something that hangs off
and spins, so that I'm recreating the same brush. See,
but you know what the problem is, you know what
I think? Now the brush has been out for twenty years, right,
(24:28):
the brush has now been around for twenty years, and
people think it's a wonderful idea. Now the whole world
is probably going to come up with an idea like
the brush, right, because it's been around for twenty years,
right right, right.
Speaker 3 (24:43):
So in the meantime, you should be, like you said,
you should be working hard to come up with another feature,
adding a different feature to your brush, or do something
else so that prior to the patent being expired, or
you can file for a new so that you keep
your And there are other things that people do out
(25:04):
there as well. For example, when it comes to if
you have a cute name for your brush that you
want to trademark the name, right, that's another thing. A
trademark doesn't expire.
Speaker 2 (25:17):
And if you're using this.
Speaker 1 (25:18):
Wait a minute, A trademark does not expire.
Speaker 2 (25:21):
No, a trademark does not expire.
Speaker 1 (25:24):
News, breaking news, everybody. A trademark does not expire. No,
I don't. I didn't know that. I didn't know that
it does inspire.
Speaker 3 (25:36):
But no, it does not expire unless you're allowed to
expire by not paying your fee.
Speaker 2 (25:41):
If what is that?
Speaker 3 (25:42):
If we five years or something, okay, but it doesn't
expire forever.
Speaker 1 (25:49):
Great, great, great information. I love that. So you know what,
So this this leads me to all of these brands.
Just say, uh, let's think I just did a tie
tie detergent right tie trademark right tied as a trademark.
Speaker 2 (26:06):
M hm.
Speaker 1 (26:07):
So the name is not going to go away ever
go away. But they have what the ingredients in the
bottle is right? So new and improved? Do they patent
what is the patent process of a liquid detergent? Right?
Speaker 3 (26:21):
So it could be it could be patented as a process,
like you said, But what.
Speaker 1 (26:26):
Happens after twenty years with do they is this work?
Speaker 3 (26:28):
You know?
Speaker 1 (26:29):
You see new and improved liquid? Is that why they
do new and improved Because.
Speaker 3 (26:33):
That's why they do new and improved liquid because they
now come up with a different process.
Speaker 2 (26:38):
But then again, then again, and this is.
Speaker 3 (26:41):
Where it kind of it's kind of not convoluted in
the sense they could keep it as.
Speaker 2 (26:48):
A trade secret as well, got it.
Speaker 3 (26:53):
You know, they don't have to patent it, just like
cook the recipe for coke is a trade secret. It
has been for falling you so have many years.
Speaker 1 (27:03):
So the trade secret no one knows about. The trade secret.
That's a whole nother that's a whole nother process. That's
a that's all so exciting, very exciting. So I mean,
I so appreciate you coming on and please tell everybody
how they can find you your if you're If you
(27:23):
have social media handles, please express that, tell us how
we can find you and share. Thank you for sharing
all of your information.
Speaker 3 (27:30):
Thank you so much. They can find me on LinkedIn
just my name Emmanuel Coffee c O f f Y.
My my website is Coffee Law c O f f
Y l A W dot com. And they can always
google the name as well. Emmanual E M M A
(27:50):
n U E L c O f f y and
they can find me that way. They can also call Lisa.
Speaker 2 (27:58):
You certainly can't.
Speaker 1 (28:00):
This is so enlightening. I love to hear from different
patent attorneys, regular attorneys because it's always interesting for people
to learn and understand, and everybody has a different take
on it or a different way is explained. And so
I really appreciate your explanation on the engineering piece and
and just you know, examining the examiners who take a
(28:22):
look at your product. This was all so important to
all of our my patent my patented clients, non patented especially,
and people who are out there looking to get started
in this industry. So I really appreciate it. So thank
you so much for being on our podcast today and
look forward to seeing you again. Will you come back again?
Speaker 3 (28:43):
Thank you, Lissa. I certainly will. Okay, I certainly will.
Once you give me the invitation.
Speaker 2 (28:49):
I will.
Speaker 1 (28:50):
You got it, okay, Stan, thank you so much and
we'll see you next time.
Speaker 2 (28:54):
Bye.
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