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 by way of 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 legislation 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 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 functions. Assuming she passes, she then intends to go to legislation faculty to develop into a patent lawyer.

The best way to Grow to be a Patent Engineer

Knee initially didn’t know what she wished to review in faculty. Ultimately she determined that an engineering diploma provided 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 Improvement, 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 legislation 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 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 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 data isn’t meant to supply authorized recommendation, she notes, and each nation has its personal patent system, with completely different guidelines and laws. 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.

“For those who disclose your invention publicly and don’t file an software inside one 12 months, 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 must be helpful for some goal—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 parts which can be combined 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—aside 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 present inventors steerage on the patentability of AI.“From my understanding, AI itself shouldn’t be 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 may have the most effective probability to patent an invention. In any other case, you’re out of luck,” she says.

The patent submitting course of can fluctuate extensively when it comes to 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 larger 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 present innovations and the one within the submitting.

For inventors eager about pursuing a patent for the primary time, “I’d extremely suggest in search of out a patent practitioner—a patent lawyer or patent agent—who presents 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 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 normal steps:

1. File a provisional software when you have got a proof of idea or prototype. Such a software doesn’t undergo the USPTO however as an alternative holds a spot in line to your patent. Provisional functions 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’ll be able to usually 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 appliance can be thought of deserted.
4. For those who obtain a discover of allowance (NOA), have fun! Your software is eligible to develop into a patent. Upon cost of some charges, you’ll obtain a problem notification doc displaying the date when the patent can be formally granted, providing you with the proper to exclude others from utilizing or promoting your invention in the USA.
5. For those who obtain a discover referred to as a remaining workplace motion, you have got two choices. You’ll be able to 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 software, Knee says.“For those who disclose your invention publicly and don’t file an software inside one 12 months, 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 exhausting and really costly to reverse.” She additionally advises individuals to watch out about disclosing their innovations by way of social-media platforms or different communication strategies.

In right this moment’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 individuals use patents for assist securing buyers,” Knee says. Nevertheless it’s not a one-and-done scenario, she says. “The secret’s having one patent and submitting further functions that piggyback off of it. This course of could be expensive however has a huge effect on stopping rivals from manufacturing related merchandise in a brand new discipline and defending inventors in litigation battles.”