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 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 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 presently 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 purposes. Assuming she passes, she then intends to go to legislation faculty to turn into a patent lawyer.

How you can Turn into a Patent Engineer

Knee initially didn’t know what she wished to check in faculty. Ultimately she determined that an engineering diploma supplied various 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 in addition 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 autos.

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 legislation 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 legislation has its quirky sides. Sooner or later her supervisor walked into one of many associate’s places of work and noticed the lawyer “ripping aside a stuffed animal, guts in all places,” she says. “[My] boss requested if the associate 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 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 utility. Two out of three patents get permitted by the USPTO, she says.

“When you 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 should have utility—that’s, it must be helpful for some goal—and novelty, that means that it’s not an apparent variation of what already exists, she says. It might 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, units for unlawful pursuits, strategies of administering enterprise, mathematical discoveries, and scientific rules—apart from units 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 offer inventors steerage 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 purposes. “Whoever information an utility 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 price and complexity, she says. Prices embody submitting charges and lawyer charges. Smaller corporations and particular person inventors might qualify for reductions on USPTO charges. Prices could also be larger for patent filings that require in depth modifications and prolonged communication with the patent workplace. Complexity will depend on how a lot analysis USPTO examiners should do to find out the distinction between present innovations and the one within the submitting.

For inventors occupied with pursuing a patent for the primary time, “I might extremely suggest in search of out a patent practitioner—a patent lawyer or patent agent—who affords 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 places of work 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 common steps:

1. File a provisional utility when you could have 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 purposes expire after one yr.
2. To observe 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 (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 without charge or pay a price for an extension of as much as six months. When you don’t reply, the appliance can be thought-about deserted.
4. When you obtain a discover of allowance (NOA), have a good time! Your utility is eligible to turn into a patent. Upon fee of some charges, you’ll obtain a problem notification doc exhibiting the date when the patent can be formally granted, providing you with the appropriate to exclude others from utilizing or promoting your invention in the USA.
5. When you obtain a discover known as a ultimate workplace motion, you could have two choices. You may abandon the appliance, or you possibly can 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 utility, Knee says.“When you 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 concept by submitting first, this may be onerous and really costly to reverse.” She additionally advises folks to watch out about disclosing their innovations via social-media platforms or different communication strategies.

In as we speak’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 permitted but.

And different inventors use patents to launch their dream startup. “I’ve seen folks use patents for assist securing buyers,” Knee says. But it surely’s not a one-and-done state of affairs, she says. “The hot button is having one patent and submitting extra purposes that piggyback off of it. This course of may be expensive however has a huge effect on stopping opponents from manufacturing comparable merchandise in a brand new subject and defending inventors in litigation battles.”