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 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 might hear tales of his experiences by 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 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 purposes 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 purposes. Assuming she passes, she then intends to go to legislation faculty to change into a patent legal professional.

Methods to Grow to be a Patent Engineer

Knee initially didn’t know what she needed to review in faculty. 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 additionally studied energy programs 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 a knowledge evaluation instrument 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 aspect, 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 companion’s places of work 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 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 data isn’t meant to offer 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 authorized by the USPTO, she says.

“In case you disclose your invention publicly and don’t file an utility inside one yr, 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 needs to be helpful for some function—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 parts which are 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—excluding units 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 offer inventors steering 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 may have the very best 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 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 increased for patent filings that require intensive modifications and prolonged communication with the patent workplace. Complexity depends 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 serious about pursuing a patent for the primary time, “I might extremely suggest looking for out a patent practitioner—a patent legal professional or patent agent—who affords 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 basic steps:

1. File a provisional utility when you’ve got a proof of idea or prototype. One of these utility doesn’t undergo the USPTO however as an alternative 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 widespread to get a rejection. You’ll be able to sometimes reply inside three months without charge or pay a price for an extension of as much as six months. In case you don’t reply, the applying might be thought-about deserted.
4. In case you obtain a discover of allowance (NOA), have a good time! Your utility is eligible to change into a patent. Upon cost of some charges, you’ll obtain a problem notification doc exhibiting the date when the patent might be formally granted, providing you with the best to exclude others from utilizing or promoting your invention in the US.
5. In case you obtain a discover known as a last workplace motion, you’ve got 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.“In case you disclose your invention publicly and don’t file an utility inside one yr, 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 onerous 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 in the present day’s mental property market, patents are foreign money. 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 traders,” Knee says. But it surely’s not a one-and-done state of affairs, she says. “The secret’s having one patent and submitting extra purposes that piggyback off of it. This course of will be expensive however has a big impact on stopping opponents from manufacturing related merchandise in a brand new subject and defending inventors in litigation battles.”