Recommendation for first-time inventors from a patent engineer

Lesley-Ann Knee credit her father for introducing her to the world of patents. He’s an engineer who makes a speciality of application-specific built-in circuits (ASICs) and holds a number of patents on applied sciences he developed whereas working for Hewlett-Packard and Microsoft.

“I’d hear tales of his experiences by means of the patent prosecution processes,” Knee says, which taught her about totally different sorts of patents, the significance of documentation, and utilizing detailed language. She remembers one litigation battle over a patent that went on for years, which her father’s firm misplaced as a result of somebody forgot to delete info in a patent declare.

Knee, {an electrical} engineer, now works as a patent engineer within the patent prosecution division on the regulation workplace of
Husch Blackwell, headquartered in Chicago. Underneath the supervision of patent attorneys, Knee helps with writing, submitting, and managing patent functions with the U.S. Patent and Trademark Workplace (USPTO).

She is presently finding out for the patent bar examination, which might qualify her to be a licensed patent agent, registered with the USPTO to assist put together and prosecute patent functions. Assuming she passes, she then intends to go to regulation faculty to grow to be a patent legal professional.

Easy methods to Develop into a Patent Engineer

Knee initially didn’t know what she needed to review in faculty. Ultimately she determined that an engineering diploma supplied numerous profession alternatives, so she enrolled at
Colorado State College, in her hometown of Fort Collins. She adopted in her father’s footsteps, specializing in ASIC design, but additionally studied energy techniques and semiconductor physics and minored in arithmetic. In 2022 she labored as an intern within the engine analysis division of Honda Analysis and Improvement, in Raymond, Ohio, the place she developed a knowledge evaluation software to assist with testing warmth distribution in automobiles.

After graduating from Colorado State in 2022, she determined to get a job associated to patents. From January to Might, she labored part-time as a patent technical intern on the regulation agency of
Dorsey & Whitney, in Denver. “After studying about patents from the opposite aspect, I fell in love with the trade,” she says. Knee joined Husch Blackwell in June 2023.

She discovered that patent regulation has its quirky sides. In the future her supervisor walked into one of many accomplice’s places of work and noticed the legal professional “ripping aside a stuffed animal, guts in every single place,” she says. “[My] boss requested if the accomplice was okay. She defined that she had been pulled right into a litigation case that depended completely on the kind of stitching used
inside the stuffed animals.”

What Can Be Patented?

Right here is Knee’s primer on U.S. patents and her recommendation for first-time inventors submitting patents with the USPTO. This info isn’t supposed to supply authorized recommendation, she notes, and each nation has its personal patent system, with totally different guidelines and rules. For specifics or steering about authorized issues, she recommends contacting a patent practitioner.

Knee’s first piece of recommendation? Don’t be afraid of submitting a patent software. Two out of three patents get accepted by the USPTO, she says.

“If you happen to disclose your invention publicly and don’t file an software inside one yr, you possibly can be barred from receiving a patent on that actual invention.”

To obtain a patent, an invention will need to have utility—that’s, it must be helpful for some function—and novelty, that means that it’s not an apparent variation of what already exists, she says. It could possibly be a machine, a producing course of, or a composition of matter (that’s, a novel mixture of pure parts which are combined mechanically or chemically).

Some issues that may’t be patented, she says, are atomic weapons, gadgets for unlawful pursuits, strategies of administering enterprise, mathematical discoveries, and scientific ideas—aside from gadgets and strategies that make use of these ideas.

The USPTO has acknowledged a rising curiosity in synthetic intelligence over the previous few years, and in 2024 it launched
examples of AI patentability to provide inventors steering on the patentability of AI.“From my understanding, AI itself isn’t patentable,” Knee says. However utilizing AI to invent one thing doesn’t essentially make the invention unpatentable, she says.

An Overview of the Patent Course of

The USPTO makes use of the “first to file” system for patent functions. “Whoever information an software first could have the perfect likelihood to patent an invention. In any other case, you’re out of luck,” she says.

The patent submitting course of can differ broadly when it comes to price and complexity, she says. Prices embrace submitting charges and legal professional charges. Smaller corporations and particular person inventors might qualify for reductions on USPTO charges. Prices could also be larger for patent filings that require intensive modifications and prolonged communication with the patent workplace. Complexity depends upon how a lot analysis USPTO examiners should do to find out the distinction between current innovations and the one within the submitting.

For inventors enthusiastic about pursuing a patent for the primary time, “I’d extremely advocate in search of out a patent practitioner—a patent legal professional or patent agent—who presents free consultations to find out patentability, a attainable motion plan, price, and a timeline for submitting,” Knee says. Additionally, some universities have mental property authorized places of work that may advise professors and college students on the patent course of.

For somebody who needs to file a patent themselves, listed here are some normal steps:

1. File a provisional software when you’ve a proof of idea or prototype. This sort of software doesn’t undergo the USPTO however as an alternative holds a spot in line to your patent. Provisional functions expire after one yr.
2. To observe up, file a nonprovisional software inside one yr of the primary submitting. This software is examined by the patent workplace and receives the submitting date of the provisional software.
3. Promptly reply and reply to any USPTO rejections (known as workplace actions), which clarify the explanations your invention can’t be patented. Knee says it’s fairly widespread to get a rejection. You may usually reply inside three months for free of charge or pay a price for an extension of as much as six months. If you happen to don’t reply, the applying will probably be thought of deserted.
4. If you happen to obtain a discover of allowance (NOA), have fun! Your software is eligible to grow to be a patent. Upon fee of some charges, you’ll obtain a difficulty notification doc displaying the date when the patent will probably be formally granted, providing you with the proper to exclude others from utilizing or promoting your invention in america.
5. If you happen to obtain a discover known as a ultimate workplace motion, you’ve two choices. You may abandon the applying, or you’ll be able to file a request for continued examination, which requires you to pay for an additional spherical of prosecution and clarify additional why your invention deserves a patent.

The Worth of Mental Property

Watch out disclosing details about your invention or promoting it earlier than submitting a patent software, Knee says.“If you happen to disclose your invention publicly and don’t file an software inside one yr, you possibly can be barred from receiving a patent on that actual invention,” she says. “Due to the ‘first to file’ system, if somebody steals your thought by submitting first, this may be laborious and really costly to reverse.” She additionally advises individuals to watch out about disclosing their innovations by means of social-media platforms or different communication strategies.

In right now’s mental property market, patents are forex. Knee has seen corporations use patents as collateral for a mortgage, even when the patent software hasn’t been accepted but.

And different inventors use patents to launch their dream startup. “I’ve seen individuals use patents for assist securing traders,” Knee says. However it’s not a one-and-done state of affairs, she says. “The bottom line is having one patent and submitting extra functions that piggyback off of it. This course of could be dear however has a huge effect on stopping rivals from manufacturing related merchandise in a brand new discipline and defending inventors in litigation battles.”