Pivot Point

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Welcome to the Pivot Point where we talk about all things pivot, all things business, and all things Vegas. I'm your host, Bardia. Let's get the ball rolling. All right. Hello, everybody, and welcome back to another exciting episode of The Pivot Point. the pivot point. The topic on everybody's mind today is intellectual property and with me I have a longtime friend and experienced IP law attorney Eric Coley. Thank you for being here today. Thank you for having me. Now you have so many years of experience in this regard. Can you just quickly tell us your journey as an

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IP lawyer? How did you get to this point? So that's a very interesting question. My bachelor's is in electrical engineering and when I was in engineering college never thought about law as a career and during engineering college I heard talk about there's this fantasy thing called patent law and it's a great career and it's like the next level higher than just having an engineering degree. So you know it just was in the back of my mind and then I graduated I was working as an engineer and didn't feel quite challenged enough and then I remembered that whole idea about maybe pursuing patent law because the thing is patent law is a closed area of law. You have to pass the patent bar and be a member of the patent bar in order to practice patent law before the US Patent and Trademark Office. So being a closed field, it's kind of a niche, elite kind of space to be in. So I explored it and I took the LSAT blindly. I didn't even prepare for it. And then I applied to three law schools, got into all three, and went to law school part-time. And then even during law school, I wasn't sure if it was going to work out. I had a good career. I had a good profession. I was going to law school part-time. And then my senior year of law school, I was given a very nice summer associate position at a good, well-respected law firm. And so that's how the transition occurred. That's awesome so I'm not that familiar with law school so I'm just curious at what point do you choose IP law? Is it similar to medical school where you choose a specialty or is it something different? A very good question. Actually no, in law school you don't necessarily declare a specialty. Like my law degree does not say IP lawyer or specializing in IP law. As my choices for my electives during law school, I picked IP courses, patent law, trademark law, copyright law, trade secrets, so I intentionally chose those kind of classes because I knew if I were ever to practice law it would only be IP law. And so I myself kind of maneuvered my career and my expertise in that direction. And then once I was hired by a law firm, of course, all they wanted me to do was focus on IP law. So it just kind of became a self-fulfilling prophecy there.

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Absolutely. So let's get into the meat of it a little bit. And by answering the question, what is intellectual property? So I think some of the most commonly known by any audience would be like, what is a patent? What is a trademark? And what is a copyright? And when do I need those? You're free to expand upon that. But what's the gist of it?

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OK, again, very good question. So intellectual property law, just like the name implies, is something a person creates intellectually. So they create, whether it's an invention, an idea, they want to start a new business and they have a catchy name that's a trademark, or they write a book or they compose music that's copyright law. So anything that you create through your intellect, through your creative processes, is your intellectual property. Another field you did not mention is trade secrets. So let's say you have the example I like to use the Coca-Cola formula. It's a trade secret. They maintain it as a trade secret and it's worth a lot of money for the company. Like it's valued somewhere in the billions of dollars. So intellectual property is something you create from the mind and it's yours as long as you take the steps necessary to protect your rights, your IP rights in that intellectual property. So it doesn't necessarily happen automatically. There's a little bit of footwork involved on the owner's part to make sure that their rights are legally protected. The second part of your question is patents versus trademarks versus copyrights versus anything else. Another good question. So patents are something you invent, you create. Let's say you create a different new novel mousetrap, right? You want to patent it. You see patent pending stamped on a lot of products you buy. That's because someone created it, they've applied for a patent and they want the world to know that I got a patent coming protecting this invention or this device. Trademarks are something different. So let's use Coca-Cola as an example again. So the the the mark Coca-Cola is their intellectual properties, that company's trademark. And if you start selling, there's a bottle of water sitting here, if you start selling water and you put Coca-Cola on that beverage, you'll hear from Coca-Cola's trademark attorneys very quickly. So anyway, that's trademarks. Copyrights is any kind of composition. You write a book, a movie, a song. song, I mean there's copyright rights in that creation so to speak.

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So those are the main differences between the three main types of intellectual property. And it's so interesting because even our classes, we're kind of learning about them, even though they're not IP law, especially in our accounting class. We're learning that these are all intangible assets. can't necessarily touch them, you can't necessarily place, it's placing a value on these, it's clearly there. It's just hard to do in terms of their books. So that's just been an interesting.

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Yes, and I will agree with that. So intellectual property is an asset. And now, for a long time now, it goes on a company's balance sheet as an asset. You're right, it's intangible basically. It's not something, a trademark or a copyright. You can't necessarily touch that. I mean you can get a certificate showing that you own the trademark. But as far as the valuation of it, it is absolutely a valuation for the company. When companies are sold, that's part of the negotiation process. How much is the IP worth? Now the seller, the guy who owns the company who's selling it is going to say, oh, it's worth so many millions of dollars. And the buyer is going to say, no, no, no, it's worth less. You're overvaluing it. negotiation or disagreement, but it's definitely an asset. So yeah, I believe that your classes are teaching you about that. Yeah, yeah. So let's say I'm a person in

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business. What's the first step in approaching a new piece of intellectual property that I want to protect? So it depends on what

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kind of intellectual property it is. Okay, so I'll give you an example. Let's say you, you know, you sell mousetraps, right? And you create a new technology, a new type of mousetrap. So you want to invent that. You want to protect your rights in that invention. And that's when you would talk to a patent attorney and say, hey, look, I got this new idea. What do you think? And the patent attorney is going to have a whole bunch of questions for you, and then you know the patent attorney is going to tell you, okay I think that we can apply for a patent for this, and then you work with a patent attorney to you know proceed with the application process. Same thing, I have tons of clients who come in, they're small businesses, starting a new business, they have a really nice catchy name that they want to use and they believe in it And so, you know, we apply for a trademark protect that trademark for them. So no one else can steal that name and so on and so forth so Basically, you need to identify what it is that you want to protect was you know mention name? You know a song that you wrote whatever it may be and then consult with an IP lawyer and they'll guide you and they'll kind of and you can ask the IP lawyer I get asked this question almost every time every new client how much is it going to cost me and it depends on the particular project or the particular IP or the particular idea it's a case-by-case basis and your IP attorney will most likely give you rough guesstimate as to what he expects or what she expects it to cost you at the end. So that's kind of how you... And what is the scope or the jurisdiction of my protection? Just nationally most of the time. Okay, so correct. In the US, let's say you got a... you invented something and you got a patent for it. In the US Patent and Trademark Office, that patent is valid in the United States of America. That's within this country. Let's say you want to expand to Canada. Now there's different treatises under which you can also pursue patent protection in other countries. It will cost you, but you can get a patent in that country to protect your rights in that country as well. A lot of clients do that. Let's say they want to be in Japan and let's say England and they have a trademark and they're going to sell a product and they want to register that trademark in three different countries and we can pursue it for them. But the answer to your question is that your IP rights are country by country.

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Right. So do companies, I assume the bigger ones probably do multiple countries at the same time.

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Yes. Things like that. Of course. So you know the the larger corporations, the bigger companies, they do tend to pursue and seek IP protection in multiple jurisdictions. It's a business decision. I mean, it costs you. It's not cheap. So let's say you want to go in China and in England and in the US and in Canada. I mean, you're paying for each of those countries. Now, your IP protection extends to those countries after you're finished with the process, but it's gonna cost you. It's not cheap. It's true. It's true.

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How long have you served the Las Vegas area?

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I've been here 20 years now.

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Wow, that's amazing. And so what are just some challenges you've seen over the years or some misconceptions even about filing for something that I want to protect?

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That's interesting. I want to talk about one of my favorites. People for some reason believe that, let's say they have a new invention, right? If they write it down on a piece of paper, put it in an envelope and mail it to themselves, it's stamped by the U.S. Post Office, that serves as, it's like a poor man's patent. And I'm here to tell you that there's no such thing. You would not believe.

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I've never even heard of that.

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You would not believe how many times in my life I've been asked that question. And that is a myth. That is not true.

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And so what is the thinking behind that?

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I don't know. I don't know how that urban myth started. The only thing I can tell you it might go to serve is the date of conception. So you could, the dates, the U.S. posted, I'm sorry, U.S. post offices stamp, date stamp on that envelope, that sealed envelope might be used to prove that look, you had that idea as of that date. But apart from that, as far as legal rights, I am very doubtful.

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Yeah, yeah, I bet. And so something that I kind of looked into recently, that I recently learned about, some interesting topic. Have you heard of the term patent trolls?

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Oh yeah, I've worked with them actually, yes.

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Really? Interesting. Yeah. Yeah, I've read about them a little bit. So basically, correct me if I'm wrong, but they usually like file patents and try to get them accepted, obviously, in order to, I don't know, sell them or make money off of them to sort of license them out?

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Is that sort of the case? Not quite. So, the term patent trolls refers to owners of patents, whether it's their own patent or they bought the patent from some small inventor. They have a patent, they own it, and then allege you are violating my patent, my invention. Now you owe me a billion dollars because your products infringe on the claims in my patent. It's happening a lot. I've done some work for, you know, I guess, quote unquote, patent trolls, you could call them that. I don't know. But I, you know, I just did my part, what I was hired to review and advise on. But it happens a lot. There's a lot of money being paid out by some of the very big corporations in response to patents being asserted against them. Patents perhaps they didn't even know existed when they started making or selling their products. Again, it's on a case by case basis. But jury verdicts now, or these patent infringement verdicts are now in the billions. And it's happening a lot. So, you know, I know of law firms, very tiny law firms, it's all they do, is they buy patents that they believe can be asserted against some deep pockets and it's a quick and a relatively easy way, not easy but relatively easy, way of asserting a patent and going after a big payout.

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If it works, then it works.

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And it's legal. There's nothing illegal about it. It's controversial. There's a lot of debate about how right or wrong that process is. But again, the person who got the patent, they prosecuted that patent in front of the Patent Trademark Office. I mean, they got that patent issued only because they deserved a patent on that idea or invention and now fast forward to today they're asserting it against some company whose technology might be infringing on their intellectual property rights and you know contained in that patent so there's nothing illegal about it, it's just controversial. Absolutely, yeah. So let's get a time frame as well. How long is a patent, what's the lifetime of a patent and a trademark and other things? So another good question. So patent ownership now under the current laws is 20 years from the date of filing. So the date you file your patent application is called the critical date. And the life of your patent expires 20 years from that critical date. So it's to the inventor's advantage to speed up the prosecution before the patent trademark office so they have more life in that patent. So that's patents. Trademarks are potentially perpetual. Trademark rights arise out of use in commerce. So you cannot get a trademark unless you're actually using the mark to sell products or services and then you get trademark rights for that mark in those products and services that you're actually selling in commerce. Now technically you can, let's say you make donuts and you're selling them, you know, Bardia's doughnuts and that's your trademark, Bardia's doughnuts. And you could potentially, your company, you know, after you're gone, your kids and your grandkids and, you know, they could take over the company and they can continue selling Bardia's doughnuts in perpetuity. will remain until you stop, until the sale of that product or, you know, that service stops. Until then, you have the trademarks and technically they can go on forever. Yes. It could be in perpetuity, yeah.

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I'm going to start a new business called Bardia's Donuts as of tomorrow. That sounds like a good idea. So, you've also had experience with Fortune 500 companies. Is that right?

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I do have. I'm not gonna talk about clients right now.

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That's fine.

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I've actually Fortune 100 companies as well. Yes.

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That's awesome. It must be, I guess you can't talk about it. But just what's the process like? Is it like?

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So as you can imagine, these large companies, these big corporations, they have legal needs. They need good lawyers. And so what they tend to do, as you would expect, they go out and hire some of the higher end law firms, not that there's such a thing as a lower end law firm, but what they perceive as a good law firm who's a good match for them. And they work with them and they hire them. And if they're satisfied with the law firm services, that business, that book of business just keeps growing over time and so I have had the very good fortune for working for some excellent law firms as you know I'm currently with Lewis Rocha they're a very well-respected name in Nevada and my my prior firms as well big-name firms and we had some pretty impressive names as clients, names that you are well aware of. And so that's kind of how it happens, these clients, these Fortune 100 companies, Fortune 500 companies. They weren't my clients, but I was one of the attorneys who worked on their matters, on their work. There's a senior attorney who has these corporations as a client, and then when the work comes in they distribute that work to the attorneys such as myself to get the work done and then they supervise the work so that they're satisfied with the work product going out so that the

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client's happy. Absolutely so in addition to providing IP law services for your clients you also have experience in litigation right? Do all IP lawyers have this?

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No. So in IP, there's two main focuses. One is prosecution, and the other is litigation. And those are very general classifications. So prosecution would be like preparing a patent application, filing it, and then when an office action comes in from the patent trademark office, dealing with it, responding to it, and kind of, you know, walking that patent application all the way through to issuance. That's prosecution. Litigation is when companies actually sue, they have a disagreement, they say, hey you, company B, you're infringing my patent or my trademark, whatever. So now that there's a fight, there's lawsuits involved and that's litigation. And so yes, I'm currently doing some litigation matters. I have done some IP litigation before, but my focus before I joined my current firm was a lot on prosecution. But now lately at Lewis Rocha, there's There's plenty of IP litigation that I'm handling at the moment.

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Absolutely, I bet. So, I got a question for you, and I like to ask this of all my guests, really.

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What would you say to a brand new aspiring lawyer who wants to follow in your footsteps? What advice would you give them?

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So I would tell them, first of all, IP law is a great career. It's a

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very challenging, it's not an easy area of law. It's in my opinion one of the more probably one of the more difficult areas of law. So it's a great career but you have to kind of establish yourself and your background in IP, so whether it's a technical undergrad degree, let's say computer science or engineering or even chemistry, those are kind of areas that are important or valuable to clients when they're searching for good patent attorneys. But even, I'm sorry, that would be hard IP law. Patents and having that technical background and the patent bar from the US Patent Trademark Office, that would be what the nickname is, is a hard IP attorney. So I would be classified as a hard IP attorney. Then there's soft IP. Soft IP would be trademarks and copyright and trade secrets and other areas of IP law that are non-patent. Those are called soft IP attorneys and if that's what one wants to pursue and specialize in, there are tons of excellent soft IP attorneys. I work with a couple at my firm here in Vegas. There are amazing soft IP attorneys out there. So if you as a fresh attorney want to kind of go in that direction And I get calls from some Boyd students at UNLV We're asking for advice and my thoughts and that's what I tell them is that on your resume When you apply for the I you know for an IP associate position or in the IP department You you want your resume to stand out build that background now the coursework in your classes, anything else you work on, you know, while in law school that is geared towards intellectual property. I mean, all that will help your resume stand out as a potential career IP attorney or an attorney specializing in

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intellectual property law. I was going to say, because I didn't expect the diverse sort of backgrounds you can come from in order to go be an IP lawyer like Electrical engineering chemistry all that I thought it was very cut and dry

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You know, but those are the industries that yes IP. Yes, so like the pharmaceutical industry, right medicines those Most of those medicines are patented now. I have at least one client whose area of expertise and specialty, well the client's technology is in the chemical and biochemical area. I don't know that area, I don't understand that technology. So one of our biochem patent attorneys in our firm's Los Angeles office is the one handling that matter because you know that's her So yes, technically it gets pretty diverse and we patent attorneys tend to take cases and applications in the direction or in that area of the background that we have.

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Are you particularly excited about anything coming to Vegas. I know so many people are moving here, bringing businesses, sports is growing, tourism is growing. Is there anything in particular you're

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excited about in the next few years? I keep hearing about technology. I know there's two space-related companies here in Vegas. One of them did interview me. They were interested in me doing some of their IP work. The other one is like a friend's friend. I know of them, I know about them, but I just have not had direct contact with them. So that excites me. I mean, in our little Las Vegas, you know, we have companies working in the space technology or in that kind of futuristic technology area. Apart from that, I hear there's an automaker, electric automaker, who plans to have their main plant here on the outskirts of Las Vegas, I believe North Las Vegas. I don't know where that project is. You say electric automaker?

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Yeah.

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Wow.

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Yeah. EVs, electric vehicles. So I heard, I was not a very reliable source obviously, that the deal was pretty much done and it's a done deal that they will establish their plant in North Las Vegas. I hope it's true. It'd be very exciting. I think that we in Las Vegas are now big enough to have our own industry, have our own technology and I would love to see that. I would love to work with such companies and help them with their IP. I think that'd be wonderful. So that's that's exciting. Slowly we're growing and the population that's kind of relocating and moving into Las Vegas is bringing those creative genes with them and the thinking and ideas and the intellect that will create intellectual property in the future.

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Absolutely. So, just closing out the show, I want to give a shout out to some of the cool events that I've heard of recently that you can go to as a listener. So the UNLV Law School holds a community class on IP law open to the public. So if you want to get a good general basis of how it can affect your business or if you're going into that type of field that's great to look into. You can google UNLV community class in intellectual property law but if you're a business student you can also find many resources at the UNLV business school including many resources to understand and even secure your own intellectual property by going to unlv.edu slash business and if you happen to I guess need any help I just have a very basic understanding of it just through my business but I'm happy to help out anyone who wants to contact me you can contact our Twitter I think that's going to be at the end of the show but those resources for you I highly recommend you know Lee Business School has a great website and everything is on there for you. And I want to thank Eric Coley of LewisRoka law firm based right here in Vegas for being here today. Thank you. I learned so much.

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It was great. It was a pleasure being here.

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Thank you for having me. Thank you. And you can always find us wherever you find your podcasts on Spotify and Apple Podcasts by searching for The Pivot Point. Thank you so much. Thank you all for listening to the Pivot Point. Thank you all for listening to the Pivot Point. You can follow us at Pivot Point UNLV on Twitter, all one word, and hope you enjoyed the show.