Ashkan “Ash” Najafi

Patent attorney Ash Najafi on innovation (with patenting tips)

Ashkan “Ash” Najafi is a Florida-based lawyer and member of AbsolutelyNew’s external patent attorney referral network. Ash is an engineer-turned-lawyer, so he’s able to approach each patent with technical and legal insight. A member of the Florida and American Bar Associations, he’s worked at a Fortune 500 company and at one of America's top intellectual property law firms—so when it comes to patents and innovation, he’s got depth and breadth of experience. Here’s perspective from Ash:

Q: What’s the value of getting a patent vs. simply starting to make and sell an item without pursuing a patent?

Ash: It is important to obtain a filing date at the U.S. Patent and Trademark Office (USPTO) before publicly disclosing or offering to sell an invention because most foreign countries have an "absolute novelty" rule that precludes an inventor from patenting his/her invention if any public disclosure has occurred prior to obtaining the filing date. Also, some manufacturers may be more willing to work with an inventor if the invention has a filing date at the USPTO.

Q: So, should everyone pursue patenting their new product ideas?

Ash: Not necessarily. An inventor should seek advice from a patent practitioner to determine whether the invention has a reasonable chance of obtaining patent protection. Ideally, a patent practitioner should perform a patent search to help the inventor understand whether similar products have been patented.

Q: Why is the patenting process so difficult and time-consuming?

Ash: The patent process is regulated by Congress and the USPTO, and they set many rules that must be followed when seeking a patent. These rules are complicated and full of nuances that most non-lawyers may have difficulty understanding. For example, a patent application must disclose, among other things, the best mode of the invention along with how to enable a person of ordinary skill in the art of the invention to make and use the invention. In practical terms, this means a detailed written description and patent drawings of the invention are often required. This is a time-consuming step, and it’s only one of many that must be completed. Also, the USPTO has a large backlog of pending patent applications; some dating back to 2003 or earlier. So even after you complete and submit your patent application, it typically takes the USPTO at least 2-3 years to evaluate it.

Q: What’s the first thing you do when you start to review an idea for patentability?

Ash: I ask detailed questions about the invention so I can understand all of the novel and advantageous features of the invention. This is absolutely necessary in order to conduct a patent search and provide a recommended strategy for a client.

Q: Does every innovative thinker need a patent attorney to pursue a patent?

Ash: No. An inventor can pursue a patent on his or her own. However, I recommend you seek advice from a patent practitioner before spending a lot of time and money on the patent process.

Q: What’s the #1 piece of advice you have for an inventor who chooses to patent without an attorney?

Ash: Visit the USPTO website (at www.uspto.gov). It provides a lot of helpful information to independent inventors.

Q: What’s one thing you think every inventor should know about the USPTO or patenting process, that experience has taught you many don’t know?

Ash: Be patient. The patenting process is time consuming and difficult. Don't be discouraged if you do not receive a patent—not all patent applications mature into patents. Also, be prepared to spend several thousand dollars during the patenting process; some for legal fees and some for USPTO fees.

Q: What’s your favorite invention of all time, and why?

Ash: I cannot think of a favorite invention. But, I have a two-year-old daughter so I tend to remember patents that cover children's toys and safety devices.