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 focuses on 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 might 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. Beneath 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 at present learning 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 develop into a patent lawyer.

How you can Turn into a Patent Engineer

Knee initially didn’t know what she wished to review in faculty. Finally 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 programs and semiconductor physics and minored in arithmetic. In 2022 she labored as an intern within the engine analysis division of Honda Analysis and Growth, in Raymond, Ohio, the place she developed an information 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 facet, I fell in love with the business,” she says. Knee joined Husch Blackwell in June 2023.

She discovered that patent regulation has its quirky sides. At some point her supervisor walked into one of many associate’s workplaces and noticed the lawyer “ripping aside a stuffed animal, guts all over the place,” she says. “[My] boss requested if the associate was okay. She defined that she had been pulled right into a litigation case that depended totally 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 meant to offer authorized recommendation, she notes, and each nation has its personal patent system, with totally different guidelines and rules. For specifics or steerage 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 authorised by the USPTO, she says.

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

To obtain a patent, an invention will need to have utility—that’s, it needs to be helpful for some objective—and novelty, which means that it’s not an apparent variation of what already exists, she says. It may very well be a machine, a producing course of, or a composition of matter (that’s, a novel mixture of pure components which can be blended 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 rules—except for gadgets and strategies that make use of these rules.

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 present inventors steerage on the patentability of AI.“From my understanding, AI itself just 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 most effective likelihood to patent an invention. In any other case, you’re out of luck,” she says.

The patent submitting course of can fluctuate broadly by way of value and complexity, she says. Prices embody submitting charges and lawyer charges. Smaller corporations and particular person inventors could qualify for reductions on USPTO charges. Prices could also be greater for patent filings that require in depth modifications and prolonged communication with the patent workplace. Complexity is dependent 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 might extremely advocate searching for out a patent practitioner—a patent lawyer or patent agent—who provides free consultations to find out patentability, a attainable motion plan, value, and a timeline for submitting,” Knee says. Additionally, some universities have mental property authorized workplaces that may advise professors and college students on the patent course of.

For somebody who desires to file a patent themselves, listed here are some basic steps:

1. File a provisional software when you’ve a proof of idea or prototype. One of these software doesn’t undergo the USPTO however as an alternative holds a spot in line on your patent. Provisional functions expire after one yr.
2. To comply with 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 sometimes reply inside three months for gratis 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-about deserted.
4. If you happen to obtain a discover of allowance (NOA), rejoice! Your software is eligible to develop into 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, supplying you with the appropriate to exclude others from utilizing or promoting your invention in the US.
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 one more 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 may be barred from receiving a patent on that precise invention,” she says. “Due to the ‘first to file’ system, if somebody steals your concept by submitting first, this may be onerous and really costly to reverse.” She additionally advises folks 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 foreign money. Knee has seen corporations use patents as collateral for a mortgage, even when the patent software hasn’t been authorised but.

And different inventors use patents to launch their dream startup. “I’ve seen folks use patents for assist securing buyers,” Knee says. Nevertheless it’s not a one-and-done scenario, she says. “The bottom line is having one patent and submitting extra functions that piggyback off of it. This course of might be dear however has a big impact on stopping opponents from manufacturing comparable merchandise in a brand new discipline and defending inventors in litigation battles.”