Advice 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’d hear tales of his experiences by the patent prosecution processes,” Knee says, which taught her about completely 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 data 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 Office (USPTO).

She is at present 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 develop into a patent legal professional.

The best way to Turn into a Patent Engineer

Knee initially didn’t know what she wished to review in school. Ultimately she determined that an engineering diploma provided various profession alternatives, so she enrolled at
Colorado State University, in her hometown of Fort Collins. She adopted in her father’s footsteps, specializing in ASIC design, but in addition studied energy methods and semiconductor physics and minored in arithmetic. In 2022 she labored as an intern within the engine analysis division of Honda Research and Development, 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 Could, 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. Someday her supervisor walked into one of many accomplice’s workplaces and noticed the legal professional “ripping aside a stuffed animal, guts in all places,” 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 data isn’t meant to offer authorized recommendation, she notes, and each nation has its personal patent system, with completely different guidelines and laws. 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 utility. Two out of three patents get authorized by the USPTO, she says.

“In the event you disclose your invention publicly and don’t file an utility inside one 12 months, you would be barred from receiving a patent on that precise invention.”

To obtain a patent, an invention will need to have utility—that’s, it must be helpful for some function—and novelty, which 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 components which are 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—aside from gadgets and strategies that make use of these rules.

The USPTO has acknowledged a rising curiosity in artificial 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 is just not 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 recordsdata an utility first can 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 differ extensively by way of value and complexity, she says. Prices embody submitting charges and legal professional charges. Smaller corporations and particular person inventors might qualify for reductions on USPTO charges. Prices could also be greater for patent filings that require intensive 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 interested by pursuing a patent for the primary time, “I’d extremely suggest searching for out a patent practitioner—a patent legal professional or patent agent—who provides free consultations to find out patentability, a potential 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 needs to file a patent themselves, listed below are some basic steps:

1. File a provisional utility when you’ve gotten a proof of idea or prototype. This sort of utility doesn’t undergo the USPTO however as a substitute holds a spot in line in your patent. Provisional functions expire after one 12 months.
2. To comply with up, file a nonprovisional utility inside one 12 months of the primary submitting. This utility is examined by the patent workplace and receives the submitting date of the provisional utility.
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 frequent to get a rejection. You may sometimes reply inside three months for gratis or pay a payment for an extension of as much as six months. In the event you don’t reply, the appliance will likely be thought-about deserted.
4. In the event you obtain a discover of allowance (NOA), have fun! Your utility is eligible to develop into a patent. Upon cost of some charges, you’ll obtain a difficulty notification doc exhibiting the date when the patent will likely be formally granted, providing you with the precise to exclude others from utilizing or promoting your invention in the USA.
5. In the event you obtain a discover known as a remaining workplace motion, you’ve gotten two choices. You may abandon the appliance, or you possibly can 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 utility, Knee says.“In the event you disclose your invention publicly and don’t file an utility inside one 12 months, you would 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 arduous and really costly to reverse.” She additionally advises individuals to watch out about disclosing their innovations by social-media platforms or different communication strategies.

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

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