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’d hear tales of his experiences by way of 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. Underneath 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 the moment 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 change into a patent legal professional.

How one can Turn into a Patent Engineer

Knee initially didn’t know what she needed to check in school. Finally 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 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 Research and Development, 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 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. Someday her supervisor walked into one of many companion’s places of work and noticed the legal professional “ripping aside a stuffed animal, guts in all places,” she says. “[My] boss requested if the companion 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 info isn’t meant to offer authorized recommendation, she notes, and each nation has its personal patent system, with totally different guidelines and rules. 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 software. Two out of three patents get authorized by the USPTO, she says.

“If you happen to disclose your invention publicly and don’t file an software inside one yr, you possibly can 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 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 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 ideas—excluding units and strategies that make use of these ideas.

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 software first may have one of the 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 embrace submitting charges and legal professional charges. Smaller firms and particular person inventors might 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 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 enthusiastic 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, 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 below are some normal steps:

1. File a provisional software when you could have a proof of idea or prototype. Any such software 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 comply with up, file a nonprovisional software inside one yr 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 sometimes reply inside three months without charge or pay a charge for an extension of as much as six months. If you happen to don’t reply, the appliance will probably be thought-about deserted.
4. If you happen to obtain a discover of allowance (NOA), rejoice! Your software is eligible to change into a patent. Upon cost of some charges, you’ll obtain a difficulty notification doc displaying the date when the patent will probably be formally granted, providing you with the fitting to exclude others from utilizing or promoting your invention in the US.
5. If you happen to obtain a discover referred to as a closing workplace motion, you could have two choices. You’ll be able to abandon the appliance, or you’ll be able to 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.“If you happen to disclose your invention publicly and don’t file an software inside one yr, you possibly can 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 laborious and really costly to reverse.” She additionally advises folks to watch out about disclosing their innovations by way of social-media platforms or different communication strategies.

In at the 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 authorized but.

And different inventors use patents to launch their dream startup. “I’ve seen folks use patents for assist securing traders,” Knee says. However it’s not a one-and-done scenario, she says. “The hot button is 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 rivals from manufacturing related merchandise in a brand new discipline and defending inventors in litigation battles.”