Emmanuel Coffy

I am a registered Patent Attorney and a former Patent Examiner. My legal practice is focused on preparing, prosecuting, and enforcing patent applications in the electronic arts, including Business Methods Patents and Design Patents.

I have a deep background in digital technologies, computer networks, information technologies, and device physics, particularly in semiconductor applications. I am a co-inventor of the “Low Friction Apparatus,” for which a patent application is currently on file with the United States Patent & Trademark Office (USPTO). My experience also extends to re-examination, litigation support, patent infringement assessment, patentability opinion letters, cease-and-desist letters, demand letters, and due diligence.

Additionally, I provide advice on intellectual property licensing, trademarks, trade secrets, copyrights, and related issues of unfair competition and deceptive advertising. I am licensed to practice law in the State of New Jersey, the United States District Court of New Jersey, and the United States Patent & Trademark Office (USPTO).

Regarding my education, I earned a J.D. from Seton Hall University School of Law in Newark, New Jersey in 2003. I was a Ph.D. candidate in Technology Management at Stevens Institute of Technology from 1998 to 1999. I hold an M.S. in Electrical Engineering from Florida Institute of Technology, Melbourne, FL, obtained in 1993, and a B.S. in Electrical Engineering from Bridgeport Engineering Institute, Bridgeport, CT, completed in 1986.

I have contributed to publications and delivered presentations, including co-authoring “The need for signal claims” in IDEA: The Intellectual Property Law Review. I have also authored books such as "The Value of Your Idea$" available at https://www.trafford.com/Bookstore/BookDetail.aspx?BookId=SKU-001274373, “Do You Want To Be A Digital Entrepreneur," and "The App Developers’ Guide To Protecting Your Intellectual Property.”

• Copyright Infringement
• Civil Litigation/Expert Witness
• Rights of Publicity (ROP)

• Contingent Fees

New Jersey

Since 2006

United States Patent & Trademark Office (USPTO)

ID Number: 63,615

Since 2008

2nd Circuit

Since 2016

Patent Attorney - Patent Witness Expert

COFFYLAW, LLC Intellectual Property & Business Law Attorneys

2013 - Current

Perform the duties incumbent upon the manager of the firm. Additional duties include litigation support, patent expert witness, conduct expert interviews associated with litigation, patent infringement assessment including complaint drafting, claim construction and infringement chart construction, patentability opinion letter, cease-and-desist letter, demand letter, due diligence; Draft and prosecute new utility (including Business Method) and design patent applications, analyze Office Action in view of prior art, draft analysis letter and prepare reply to Office Action based on client’s response and instructions and conduct Examiner’s interview. Draft Appeal Briefs. Negotiate IP terms of agreement with marketing vendors in the context of a patent’s monetization.

Patterson & Sheridan/Wall & Tong, LLP

2008 - 2013

Draft and prosecute new utility and design patent applications, analyze Office Action in view of prior art, draft analysis letter and prepare reply to Office Action based on client’s response and instructions. Draft appeal briefs. Lead major Reexam action. Counsel new clients in obtaining patents/trademarks to protect their innovations. Area of concentration include wireless communications network, Internet Protocol (IP) networks, Optical Transport Networks (OTN).

Cozen O’Connor,

2008 - 2008

Duties included litigation support, conduct expert interviews associated with litigation, patent infringement assessment including complaint drafting, claim construction and infringement chart construction, patentability opinion letter, cease-and-desist letter, demand letter, due diligence; Drafted and prosecuted new utility (including Business Method) and design patent applications, analyzed Office Action in view of prior art, drafted analysis letter and prepared reply to Office Action based on client’s response and instructions. Drafted Appeal Briefs.

Cozen O’Connor,

2008 - 2008

Duties included litigation support, conduct expert interviews associated with litigation, patent infringement assessment including complaint drafting, claim construction and infringement chart construction, patentability opinion letter, cease-and-desist letter, demand letter, due diligence; Drafted and prosecuted new utility (including Business Method) and design patent applications, analyzed Office Action in view of prior art, drafted analysis letter and prepared reply to Office Action based on client’s response and instructions. Drafted Appeal Briefs.

THE FARRELL LAW FIRM, PC

2006 - 2008

Duties included analyze Office Action in view of prior art, draft analysis letter and prepared reply to Office Action based on client’s response and instructions. Prepared and filed new patent applications with USPTO. Drafted appeal briefs.

United States Patent and Trademark Office (USPTO)

2004 - 2006

Successfully completed the USPTO Patent Academy. Examined and prosecuted for allowance patent applications dealing primarily with computer network and Internet in the Computer Networks Technology Center (TC 2157). Conducted interviews with practitioners and prepared response to amendments and appeals. Received performance award and recognized for quality examination practice.

United States Patent and Trademark Office (USPTO)

2004 - 2006

Successfully completed the USPTO Patent Academy. Examined and prosecuted for allowance patent applications dealing primarily with computer network and Internet in the Computer Networks Technology Center (TC 2157). Conducted interviews with practitioners and prepared response to amendments and appeals. Received performance award and recognized for quality examination practice.

Seton Hall University School of Law

J.D. (2003) | Law

1999 - 2003

Stevens Institute of Technology

Ph.D. | Technology Management

1998 - 1999

Florida Institute of Technology

M.S. (1993) | Electrical Engineering

1991 - 1993

The Best Presenter Award

HABNET

2011

New York City Council Citation

New York City Council-Member Jumaane D. Williams

2011

New York City Council Citation

New York City Council Member Matthieu Eugene

2011

Congressional Certificate of Special Recognition

Honorable Congressperson Yvette Clark

2011

Academy of Court Appointed Neutrals (ACAN)

Member

2023 - Current

American Intellectual Property Law Association

Member

2020 - Current

American Bar Association  # 00820965

Member

2003 - Current

Co-author of the book "Do You Want To Be A Digital Entrepreneur? What You Need To Know To Start And Protect Your Digital Based Knowledge Business"

Trafford Publishing Company

November 3, 2021

Co-author of the Book "The Value of Your Idea$"

Trafford

September 18, 2020

The Need for Signal Claims

IDEA: The Intellectual Property Law Review

October 1, 2008

IP Breakfast, Podcast, https://anchor.fm/albert-decady/episodes/IP-Breakfast--A-look-at-the-disparity-in-IP-with-Attorneys-A--Whittington--A--Decady-and-E--Coffy-ei86f1

Registered Patent Attorney

United States Patent and Trademark Office (USPTO)

2008

Q. Can I distribute 3D voxel models made from licensed 2D assets?

February 24, 2025

A: Yes, the restriction on redistribution likely applies to your 3D voxel models because they are derivative works of the original 2D assets. Here’s a breakdown of the key legal considerations:

1. Understanding Derivative Works.

A derivative work is a creation that is based on or adapted from an existing copyrighted work. Since your 3D voxel models closely follow the design of the 2D pixel art, they are likely considered derivative under copyright law.

Even though you’ve transformed the assets from 2D to 3D, courts often rule that substantial similarity in design can still make it a derivative work.

In most cases, the original artist retains control over derivative works unless the license explicitly grants permission.

2. License Restrictions.

You mentioned that the license:

Requires crediting the original artist → This usually applies to authorized use but doesn’t necessarily allow redistribution.

Forbids redistribution and resale, even if modified → This strongly suggests that any altered version (including your 3D voxel models) cannot be shared or sold separately.

Allows use in personal projects → You can use your voxel models in your own games, but this does not extend to allowing others to use them.

Since your voxel models are directly based on the licensed pixel art, the redistribution restriction likely applies.

3. What If the Original Artist Doesn’t Respond?

If the artist doesn’t reply to your request for permission, the safest assumption is that you cannot distribute the voxel models. Silence does not imply consent.

4. Options for Moving Forward.

Continue using them in your own projects: You are likely allowed to use them within your own games, including commercial ones, as per the license.

Seek explicit permission again: If you can get a response from the artist allowing redistribution, you may proceed.

Create original voxel models: If you want to distribute models, consider designing voxel assets from scratch without closely following the original 2D sprites.

Look for an open-license or custom agreement: Some asset packs come with more permissive licenses allowing redistribution under certain conditions.

5. Potential Legal Risks of Distribution.

If you distribute the voxel models without permission, the artist could:

Issue a DMCA takedown if you share them online.

Demand compensation or legal action if your use is found to be infringing.

Hurt your reputation in game development communities.

Conclusion: Safe Usage vs. Risky Distribution.

You can use the voxel models in your own games.

You likely cannot distribute them to others without explicit permission.

If your goal is to share 3D voxel assets, the safest approach is to create original voxel designs that do not copy the 2D assets. ... Read More

Q. How to avoid patent infringement for dating app features in Texas?

February 24, 2025

A: Avoiding patent infringement for your dating app in Texas (or anywhere) involves a structured approach, including legal due diligence and strategic feature development. Here’s a roadmap:

1. Conduct a Comprehensive Patent Analysis

Given you’ve identified potentially relevant patents, the next step is to perform a detailed comparison of their claims against your app's features. Consider:

Utility patents (e.g., 9733811): These protect functional aspects of software.

Design patents (e.g., D755814, D779540, etc.): These protect visual or UI elements.

Steps:

Claim Mapping: Identify the specific claims in these patents and compare them with your app’s functions/UI.

Look for Workarounds: If a feature is patented, explore alternative implementations that achieve the same goal without directly copying the patented method or design.

2. Perform a Freedom-to-Operate (FTO) Search

A Freedom-to-Operate (FTO) analysis helps determine if your app infringes any enforceable patents. This typically involves:

Analyzing patents in force (expired patents are public domain).

Checking if your app falls under the claims’ scope.

Considering prior art (evidence that a patented invention existed before the patent filing).

3. Modify or Design Around Patented Features

If a feature is covered by an active patent, consider:

Alternative implementation: Change the method or process.

UI design modifications: For design patents, small changes might be insufficient—significant modifications are safer.

Utilizing prior art: If similar features existed before the patent was filed, you may have a legal defense.

4. Consult a Patent Attorney

A Patent Attorney can:

Assess potential infringement risks based on an FTO analysis.

Provide a non-infringement opinion to reduce legal risk.

Help file your own patents if your app has novel, patentable features.

5. Consider Licensing or Cross-Licensing

If critical patents block your app:

Negotiate a licensing agreement with the patent holders.

Cross-license if you hold patents that interest them.

Acquire expired or weak patents to bolster your position.

6. Monitor Patent Expiration & Legal Challenges

Patents have a limited lifespan (usually 20 years for utility patents, 15 years for design patents).

Some patents may be challenged via Patent Trial and Appeal Board (PTAB) proceedings or litigation.

7. Strengthen Your Position with Your Own Patents

If your app introduces unique features:

File for patents to protect your innovations.

Use defensive publication (public disclosure) to prevent others from patenting similar ideas.

Next Steps

Consult an IP Attorney for an FTO analysis and legal advice.

Document independent development of features to prove originality.

Consider licensing if necessary.

Modify designs to avoid infringement where needed. ... Read More

Q. How can I trademark my personal name for doula services?

February 20, 2025

A: Trademarking your personal name for doula services involves showing that your name functions as a brand identifier rather than just a personal identifier. By conducting a proper search, filing in the correct class with the correct basis, and preparing to demonstrate secondary meaning if necessary, you can successfully move toward securing a federal registration for your name. If you anticipate hurdles related to distinctiveness or surname refusals, gathering strong evidence of consumer recognition will be key.

Consider Professional Assistance:

Although you can file a trademark application on your own, working with a trademark attorney can help you:

Conduct a thorough clearance search.

Provide guidance on evidence of acquired distinctiveness (if necessary).

Draft effective responses to any USPTO refusals.

Ensure your application and specimens meet all legal requirements. ... Read More