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’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 info in a patent declare.

Knee, {an electrical} engineer, now works as a patent engineer within the patent prosecution division on the legislation workplace of
Husch Blackwell, headquartered in Chicago. Below 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 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 purposes. Assuming she passes, she then intends to go to legislation faculty to grow to be a patent legal professional.

Methods to Grow to be a Patent Engineer

Knee initially didn’t know what she wished to review in faculty. Finally she determined that an engineering diploma provided 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 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 legislation agency of
Dorsey & Whitney, in Denver. “After studying about patents from the opposite facet, I fell in love with the trade,” she says. Knee joined Husch Blackwell in June 2023.

She discovered that patent legislation 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 solely 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 offer authorized recommendation, she notes, and each nation has its personal patent system, with completely 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 accepted by the USPTO, she says.

“When you disclose your invention publicly and don’t file an software inside one 12 months, you may be barred from receiving a patent on that actual invention.”

To obtain a patent, an invention should 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 may very well be a machine, a producing course of, or a composition of matter (that’s, a novel mixture of pure parts which might 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 ideas—excluding 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 steerage 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 purposes. “Whoever recordsdata an software first may have the very best likelihood 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 embody submitting charges and legal professional charges. Smaller firms 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 present innovations and the one within the submitting.

For inventors inquisitive about pursuing a patent for the primary time, “I’d extremely advocate searching for out a patent practitioner—a patent legal professional or patent agent—who provides 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 workplaces 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 may have 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 purposes expire after one 12 months.
2. To observe up, file a nonprovisional software inside one 12 months 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 (referred to as workplace actions), which clarify the explanations your invention can’t be patented. Knee says it’s fairly widespread to get a rejection. You possibly can usually reply inside three months for free of charge or pay a price for an extension of as much as six months. When you don’t reply, the appliance shall be thought of deserted.
4. When you obtain a discover of allowance (NOA), have fun! Your software is eligible to grow to be a patent. Upon cost of some charges, you’ll obtain a difficulty notification doc displaying the date when the patent shall be formally granted, supplying you with the best to exclude others from utilizing or promoting your invention in the US.
5. When you obtain a discover referred to as a ultimate workplace motion, you may have two choices. You possibly can 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 software, Knee says.“When you disclose your invention publicly and don’t file an software inside one 12 months, you may be barred from receiving a patent on that actual 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 folks to watch out about disclosing their innovations by social-media platforms or different communication strategies.

In right this moment’s mental property market, patents are foreign money. Knee has seen firms 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 folks use patents for assist securing buyers,” Knee says. However it’s not a one-and-done state of affairs, she says. “The secret is having one patent and submitting extra purposes that piggyback off of it. This course of may 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.”