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 via 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 purposes with the U.S. Patent and Trademark Workplace (USPTO).

She is at the moment 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 purposes. Assuming she passes, she then intends to go to regulation college to change into a patent legal professional.

Learn how to Turn into a Patent Engineer

Knee initially didn’t know what she needed to review in school. 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 device to assist with testing warmth distribution in autos.

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. Someday her supervisor walked into one of many companion’s workplaces and noticed the legal professional “ripping aside a stuffed animal, guts in every single place,” she says. “[My] boss requested if the companion was okay. She defined that she had been pulled right into a litigation case that depended fully 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 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 accredited by the USPTO, she says.

“For those who disclose your invention publicly and don’t file an utility inside one yr, you could possibly be barred from receiving a patent on that actual invention.”

To obtain a patent, an invention will need to have utility—that’s, it needs to be helpful for some objective—and novelty, that 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, units for unlawful pursuits, strategies of administering enterprise, mathematical discoveries, and scientific ideas—apart from units 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 present inventors steering 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 purposes. “Whoever recordsdata an utility first could have the perfect probability to patent an invention. In any other case, you’re out of luck,” she says.

The patent submitting course of can differ extensively 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 increased for patent filings that require in depth modifications and prolonged communication with the patent workplace. Complexity relies on how a lot analysis USPTO examiners should do to find out the distinction between current innovations and the one within the submitting.

For inventors inquisitive about pursuing a patent for the primary time, “I’d extremely suggest in search of out a patent practitioner—a patent legal professional or patent agent—who gives free consultations to find out patentability, a potential motion plan, price, 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 utility when you will have a proof of idea or prototype. One of these utility doesn’t undergo the USPTO however as a substitute holds a spot in line in your patent. Provisional purposes expire after one yr.
2. To comply with up, file a nonprovisional utility inside one yr 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 (referred to as workplace actions), which clarify the explanations your invention can’t be patented. Knee says it’s fairly frequent to get a rejection. You’ll be able to sometimes reply inside three months for gratis or pay a payment for an extension of as much as six months. For those who don’t reply, the applying will probably be thought of deserted.
4. For those who obtain a discover of allowance (NOA), rejoice! Your utility is eligible to change into a patent. Upon fee of some charges, you’ll obtain a difficulty notification doc exhibiting 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 america.
5. For those who obtain a discover referred to as a ultimate workplace motion, you will have two choices. You’ll be able to abandon the applying, or you may 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.“For those who disclose your invention publicly and don’t file an utility inside one yr, you could possibly 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 exhausting and really costly to reverse.” She additionally advises individuals to watch out about disclosing their innovations via social-media platforms or different communication strategies.

In in the present day’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 accredited but.

And different inventors use patents to launch their dream startup. “I’ve seen individuals use patents for assist securing traders,” Knee says. Nevertheless it’s not a one-and-done scenario, she says. “The secret’s having one patent and submitting extra purposes that piggyback off of it. This course of might be expensive however has a big impact on stopping opponents from manufacturing related merchandise in a brand new area and defending inventors in litigation battles.”