Michael Jones is a patent attorney who hails from Brooklyn and practices patent law in the State of New York (although his clients come from across the United States). We met via a marketing email almost accidentally, but I contacted him and found him to be a highly intelligent and knowledgeable attorney who was well versed (and has worked on many cases) in the patent field. We are currently working together on a book aimed at manufacturers on the values and how-tos of patents.
Manufacturers, including contract and parts shops, would do well to know more about patents, as it can affect the company’s standing in the industry as well as value to a buyer or investor. We spoke with Michael in March 2025 about fabricators and other manufacturers pursuing patents.
Fifth Wave Manufacturing: We’re here today with our very special guest and someone I’ve known for about a year and a half, patent attorney Michael Jones. Welcome Michael, and thank you for joining us today. We really appreciate it.
Michael Jones: You’re welcome. This is fun. I can’t believe it’s already been a year and a half. That’s amazing. I’m enjoying speaking with you, and we’ve been having a good time with our conversations and drafting our book. It’s been a good time.
FWM: For me too! Let’s say I am a fabricator, or own some kind of a manufacturing concern. I have this great idea that no one else has implemented. There are lots of options and directions available. Maybe I think I should talk to an attorney about this. First, it should be a patent attorney, right? And perhaps your name comes up and I call you. What does our conversation sound like?
Jones: Well, an attorney will reassure you that everything is confidential and hopefully you’ll run into a an attorney that will just speak with you freely without charging you in the beginning. Without that first conversation, no one can really know what the idea is or whether it has any legs with patents. If you don’t have the ability to have a real conversation without worries of information being lost, or being worried about the clock…. Typically, I’ll spend anywhere between 30 minutes and an hour speaking with whomever would like to figure out if they have an idea that’s worth patenting. I usually can’t give an answer to that right away.
What I can do is help you figure out what your goals are. Based on those goals, we can try to navigate a process. And if, if we’re on the same page we move forward usually with what’s called an engagement agreement. And that will include all of your rights, what’s expected of the attorney, the fees and everything that’s associated with your application or your idea. And the result is not necessarily a patent application every time. It depends on what you’re looking to do with it.
If you’re looking to manufacture it, there’s a lot of more of a process when it comes to patenting it. You have to get a patent, you have to reach out to manufacturers. You have to figure out the best ways to get it to storefronts or to clients or anybody that’s looking to use your idea. With licensing, a lot of times you’re trying to figure out how commercially viable your idea is. Patenting is an expense. It’s an investment in both money and time. It’s not just that you throw a little bit of money at it, you get a patent, and then you move forward. Usually there’s a back and forth figuring out the idea, figuring out what your goals are.
With licensing, a lot of times you go the less expensive route. You try to buy yourself time to figure out whether somebody’s willing to work with you on it, or if someone’s even interested. If you’re looking to go through the patent process, usually if you’re looking for a licensing issue or a licensing deal, or you’re trying to figure out what it would be worth for you money-wise, you would do something called a provisional application. This application has your whole idea described by a patent attorney. There are some figures that are either developed by a draftsman, by your attorney, or partially by yourself. Those figures are described in the application, and you submit that to the patent office. The patent office doesn’t look at a provisional application. All they care about is, is that a proper document? And did you pay your fee? Those are the only two things that they care about.
FWM: So that is a placeholder, more or less. And it says, I’m getting in first with my idea. I may not pursue the entire patent next week, but I’m in, I’ve got my marker in the game.
Jones: Yes. So when you’re looking to protect your idea, that gives you patent pending. A lot of the times prior to filing anything, there is a heavy emphasis on non-disclosure agreements and keeping your idea under wraps. Once you’ve disclosed your idea or attempted to sell your idea or just showed it in a in a public forum, there are clocks that start. You have essentially one year to file a patent application after you’ve disclosed or tried to sell your idea. And those kinds of rules are pretty rigid. You can’t really do much about them.
There are some exceptions. If you’re still experimenting with your idea, you could show that really what you were doing was working with an experiment, and your idea is not finished yet. It was more of a first iteration, and you’re trying to improve it, and there are ways push that date back. But it’s usually very important to get at least a provisional application on file to get that patent pending. Then you don’t have to worry about any of those dates. When you have this placeholder, a provisional application, you can freely go and search for either potential license partners.
Many times, these licensing deals are contingent on you getting a patent. What will happen is that within that year, if you decide to move forward, you have to file what’s called a non-provisional application, which is the real deal. It’s much more robust. There are figures and descriptions like in the provisional application. There is an additional part, which is called claims, that is essentially the most important part of any patent application, because the claims are just a small number of sentences. Each one of them has their own limitations. And it must be done in a very particular way for the government, and it must follow all the rules and laws associated with it.
FWM: May I interject a question here? To the person who is trying to pursue the patent for licensing, that means instead of looking at my competitors as competitors, we are looking at them as co-opetition. So they’re competitors, but they’re also part of my team, really. If they’re licensing my product, I come up with a great way to bend steel a certain way faster, cheaper, and of equal or better quality. Terrific. I can do it myself. I can use that technology inside my shop, and I can make things cheaper and faster and pass the savings onto my customer. It sounds like a road to success. However, if I say, well, what if I more or less license this to the industry and everyone can do this, and the whole industry rises, and I don’t even have to use my technology to make money on my technology, I would use it, of course, because it’s a great solution. But all of a sudden, my tough but somewhat friendly competitors are now working with me, and I’m working with them. And maybe it’s four times as much money coming into my business.
Jones: That’s a nice dream! I would love have this license and not have a job and just be a holding company that has patents. If the goal is to license it, and you want to keep your business going, great—but the ultimate goal is the industry is using your patents, and everybody’s working together. But what you may see is competitors might not work with you, and instead, they’ll either try to push your boundaries or do their best to work around it.
FWM: When you say push the boundaries, do you mean come up with their own solution that’s kind of like yours?
Jones: Yes, even infringing upon your patents sometimes. There are issues along with that. Patent litigation is pretty expensive. A lot of times patent infringement is solved by a lot of people, you know, sending angry letters back and forth. Eventually, cooler heads prevail and just say, okay, let’s make this a cost of business. How much do I have to pay you to stop this? Other times, if you’re really creating chaos with your patent, like if you’ve gotten a patent on something that’s really important to your industry, bigger fish might might be interested in either buying it to use it or buying it to shelve it.
The main thing a patent does is it prevents people from using your idea. Interestingly enough, it doesn’t mean that you can do it yourself, because sometimes your patent is on a small part of a process, and that process might also have another patent associated with it from another company. So you still might not be able to do the whole process but you will be able to prevent people from doing that small part that’s yours.
FWM: And that’s a point we need to tell the manufacturers. It’s called a dependency. This other thing has to exist for this patent technology to work. It’s really shaving down a claim, in a way.
Jones: But with claims, you want to make sure that you’re as broad as possible in scope. When I draft a claim, I want to know what you’re using your invention for. And what I try to do is have at least one claim that covers the whole thing.
Sometimes you have to go pretty narrow because there are crowded spaces. A really good example is smartphone technology. Samsung does a lot of stuff, and Apple does a lot of stuff. But like those kinds of products, and a lot of the products that you’re buying, whether, even if it’s like a Samsung phone, there is patented technology in there that’s not Samsung’s; they will license out technology from competitors, to put it in their products.
FWM: Actually, you see that a lot with Nvidia right now. Many companies are making AI systems and they’re using Nvidia chipsets and programming, and therefore they’re licensing those, they are not coming up with their own, because why reinvent the wheel?
Jones: And a lot of times when you’re dealing with stuff like that, it makes no sense to try to like shave it off, like try to be slightly different, because even if you are right, you might spend millions of dollars fighting it in court to prove that you’re right. Sometimes it just makes more business sense to share a table with your enemy, and talk about it.
FWM: I believe you have a pretty significant engineering background. And isn’t it true that if you’re prosecuting patents before the USPTO—the US Patent and Trademark Office—then you’re required to have some kind of background in whatever it is you’re prosecuting?
Jones: Absolutely, yes. Every patent attorney that you run into has to take a special thing called the patent bar. And that patent bar is like any other test. You memorize the rules, you answer questions, that’s it. The tricky part is being able to take the test—you need a certain kind of background. It’s usually a hard science, engineering, physics or you have a certain number of hard science credits at an accredited college.
I did mechanical engineering because back when I was in college, I just liked seeing it. Electrical engineering didn’t really compute to me in the beginning, because I just didn’t see it. But I can tell you deflections of I-beams because I see that.
FWM: Yes, there is a link to the real world. So why did you become a lawyer?
Jones: The funny reason why I became a lawyer was that one of my engineering professors in my junior year of college was talking excitedly about the first decade of his career. He was talking about an elbow pipe. And I just thought like, great. You designed a really cool elbow pipe. And I said, well, what else did you do? His reply was, “No, that’s what I did for 10 years. I designed one elbow pipe.” And I was like, what? No, not me. I’m not doing that for 10 years. I remembered hearing that engineers could be patent attorneys. I looked into it, and it sounded attractive to me. I get to see a bunch of different ideas. And when an inventor comes to me, I have to dive in head first into the industry, into the idea. I’ve got to live in it. I’ve got to learn it.
FWM: All the learning is a requirement as a patent attorney, is it not? Everything you look at is by definition new. In your case, the task is how to process new information that has some engineering content to it? And that is not for everyone.
Jones: It is the reason why I didn’t go into doing an elbow pipe for 10 years. I appreciate new information. If you’re open to learning, you’re open to being wrong. I prefer to be wrong in the beginning because if I don’t know exactly what it is, it’s even better. I start with a clean slate and I have to ask very basic questions. Sometimes inventors are so busy thinking of the main idea, they forget about something fundamental. I have had to ask, where does the power come from? And the inventor never thought of that. I prefer to know and look stupid than guess and mess it up for everyone.
FWM: That is a wonderful approach. Now, let me tell you a question that I fielded from a friend of mine who is a a well-known fabricator in the state of Ohio. He is a great guy, just a real lovable character. I asked him if he ever thought of what a patent might do for his business—a very successful one. And he said no. He said, “Why would I?” Michael, if you were there, it might have been a different conversation, because I don’t know all the things you do. My reply was to outline the areas where it would be really advantageous, your opportunities are such and such. What would be a great answer for him? There are lots of people who are busy and would say, “Why would I care?”
Jones: That’s a good question. Sometimes you just shouldn’t care, because you’re in an industry where the $10,000 to $15,000 investment over the course of three to four years is not worth it for you. If that’s the case, then I’m happy to tell you that. I’ve told people that they don’t need me. They should just have it as part of their contracts. And if you’re doing it better than everybody else, great. Just keep doing it better than everybody else.
Intellectual property is usually a big deal when you’re evaluating a company, especially intellectual property that’s relevant to what you do. Yeah. If your company does a good job, and has patents on what you’re doing, you could usually charge more and your company’s usually worth more money. And once you have one patent, there are ways to build the portfolio, even based on that idea.
Some people aren’t looking for return on investment. There are people who just want a patent. Wonderful, good for you, I’ll help you out. However, if there is a business side to it, usually the avenue is whether it’s something that enables you to charge more. If you want to have a company with more value with more assets, that would be another avenue, because inventors are on every application, but each invention could be assigned to a company. It could be assigned to people. Usually in the beginning, if there’s no assignment, each inventor owns it.
FWM: Answering that question, why would I be interested in a patent, shapes up into a number of things. One, you can protect your market share or increase your market share. Two, you can license the technology and make money on it that way. Three, you can use it as great leverage when it’s time to sell your company or get investors in it. Investors earmark companies that have patents to make these investments, because they know that the patent is a valued and valuable piece of that business. As part of an exit strategy, no matter what your exit strategy is, if it’s to sell the business off, if it’s to do succession with another family member, or some valued vice president, whatever, there will be more value passed along if there is an existing patent.
Jones: Yes, the added benefits differentiate your company in the market. There’s also the big reason fr a patent: it prevents reverse engineering. If you’re trying to be secretive, that could all be solved if it’s patentable. If you have a patent on it, it doesn’t matter if they figured it out on their own, or if it was reverse engineered, whatever, it’s still not allowed to be used by somebody else. Patent rights are some of the strongest rights in intellectual property.
FWM: I have a very small question that could have big implications. Let’s say I’m working on something, and my competitor is working on something that is essentially the same thing. And he started it, and I started mine a month later. I went to a lawyer and started the patent process first. Who has the right to the idea?
Jones: It used to be whomever invented it first. America was the only country that really did that. The rest of the world did what’s called “first to file” which means the person who got to the patent office first got the idea first. We fought that for a while, but now the patent goes to the one who gets to the patent office first.
FWM: I was going toward this point anyway, and you took a few steps in this direction earlier. In manufacturing, particularly metal manufacturing, making stuff out of metal has been around for a long time—since the Iron Age.
Jones: <Laugh> Yes, wow!
FWM: And a lot of processes have come and gone, but some have stayed mostly the same. If you look at our methods, that’s where much of the change is. Today we’re cutting many things with lasers or water or plasma. All this technology just keeps coming to the fore, perhaps spurring innovative thought on the part of the fabricator or machinist. In your experience, how much churn is there in that particular business right now?
Jones: You’d be surprised. There are many new ways of doing things. There is always somebody that says, “This is a better way of doing it.” The concept of steel manufacturing has been around forever. Yet we still want to know how to do it better. We still want to know how to do it more safely. We want to know if there are better ways to install it. Some welding issues have just been solved recently. Certain pipe bending issues have been solved recently. Panel benders have patents that helped solve fabrication problems. It does not matter how old this industry is. Nothing is ever, finally, perfect.
FWM: I just think it’s cool to take a industry that’s so old and still, if it is not frothy with new ideas, certainly new ideas are coming down the pike on a regular basis.
Jones: I just found a patent for adjustable beam clamps for heavy duty fabrication. It is essentially a clamp to hold heavy beams, but in a different way. Something that simple! When you read it into it, you’ll find the areas of the improvements because beam clamps have been around forever. There are always areas that feel like they’re finished, but they’re not.
FWM: That was exactly the point of my question. That’s very interesting. I think we’ve really explored a lot of areas. Before we wrap up our conversation, do you have one or two pieces of advice for somebody who is not really sure about it, but is exploring the possibility of pursuing a patent?
Jones: I would try to find an attorney to talk to, and if they’re trying to charge you money to talk to them, I wouldn’t, because you should be getting to talk to an attorney that is willing to figure out if there’s something there before they’re willing to charge you. You deserve deserve information on your situation. The second thing is, when you’re choosing an attorney, choose somebody that you’re comfortable with. It’s important for you to be able to speak with this person and that person needs to be able to understand you in your language, because if they don’t, then they can’t write a patent application for you.
FWM: It’s been great, Michael, thank you so much. We’ve gone through so much and our book shouldn’t take too much longer, and we are finishing the content. Below is Michael’s information if you would like to get in touch if you have that great idea. And I will I look forward to next week getting together and having a regular meeting instead of an interview.
Jones: Thanks so much for this time, I really appreciate it and I really like working with you.
FWM: The same for me, Michael. See you soon.
More information: www.jonesipl.com, mjones@jonesipl.com, 845-448-9468.