Interviews
24
0
0
“For students and young professionals moving from engineering to patent law, the first step is to maintain your strong technical knowledge.” – Iti Negi, Patent Practitioner.
This interview was taken by SuperLawyer Team
Posted on September 22, 2025
This interview has been published by Anshi Mudgal and The SuperLawyer Team
In the early stages of your journey, particularly while transitioning into the world of intellectual property, what were some defining experiences that helped shape your practice in patents? Could you share any formative instances that honed your core skills?
Overall, my journey in the field of Intellectual Property (IP) has been both enriching and transformative. Each organization I have worked with has added a unique dimension to my understanding of IP, helping me grow both technically and strategically. While I have had the opportunity to learn immensely at every stage, there are two experiences that stand out. Not only because of the nature of the work involved, but also because they came at pivotal moments in my career and had a lasting impact on how I approach patent practice today.
The first was my transition into an in-house role at LG Electronics, which marked a significant turning point. Although this was not at the very beginning of my career, it was one of my earliest exposures to working in a large, innovation-driven product company. It was an exciting time as the first iPhone had just launched, reshaping the mobile industry. I was one of the few patent professionals hired outside LG’s IP team in South Korea, which gave me a unique vantage point.
This role gave me critical exposure to the intersection of product design and IP. I worked extensively on handheld devices, touchscreens, and human machine interfaces. I learned to break down products into their technical components and identify key innovation areas. It was here that I began to understand the importance of aligning patent strategy with product roadmaps, ensuring that each patent family supported not just a single product but an entire innovation trajectory.
In addition, I had the opportunity to contribute to emerging areas such as smart TVs and smart home initiatives. This showed me how cohesive, ecosystem-level IP strategy can create stronger value than isolated patents. Collaborating with different business units and cross-functional teams deepened my appreciation for how patents can be leveraged as long-term strategic assets. That early experience of helping shape an IP function within a rapidly evolving tech landscape laid a strong foundation for my future roles.
The second defining chapter came during my time at Nokia USA. As part of Nokia’s patent team, I worked across high impact areas like User Interface (UI) and User Experience (UX), Augmented Reality (AR) and Virtual Reality (VR), and digital health. Being immersed in Nokia’s global innovation ecosystem, from Nokia Research Labs and Nokia Bell Labs to academic collaborations across Europe and Asia, broadened my horizons both technically and culturally.
My role encompassed a wide range of responsibilities including invention harvesting, portfolio development, prosecution, and strategic patent portfolio management across key jurisdictions such as the US, Europe, China, Japan, and Korea. I also got exposure to work with Technical Support teams for different patent licensing projects at Nokia. This includes preparing claim charts and evidence of use analyses, contributing directly to licensing and divestment strategies.
This is where I gained a nuanced understanding of how the clarity and scope of a patent can directly influence its commercial value and enforceability. I began to think more holistically, not just about obtaining patents, but about building enforceable, high-quality assets that could withstand scrutiny in licensing and litigation contexts.
Together, these two experiences helped me develop a well-rounded perspective, one that balances deep technical insight, legal precision, and strategic foresight. They taught me to view IP not just as a legal function, but as a business enabler, and that mindset has stayed with me throughout my career.
With over 17 years of in-house patent experience, looking back, what initially inspired you to pursue a degree in law after completing your engineering? Was patent law always an area of interest, or did your passion for it evolve organically over time?
Looking back, my path into patent law was not something I had mapped out early on. It was a journey that evolved gradually, shaped by experiences, exposure, and curiosity. What started as an interest in understanding how technology impacts real-world outcomes slowly matured into a deep, lasting passion for IP and patents.
During my engineering years, I was always intrigued by how innovation could be protected, monetized, and scaled. Through internships and early professional experiences, I began to realize that I was drawn not just to the technical side of things, but to the intersection of technology, business, and strategy. I found myself wanting to explore the broader picture, what happens beyond the invention itself.
That curiosity eventually led me to the field of intellectual property. I was particularly fascinated by how IP brings together technical analysis, strategic thinking, and legal structure. My initial experiences with patent work, mostly through hands-on projects and on-the-job learning, made a strong impression on me. The more I was exposed to the field, the clearer it became that I wanted to move beyond executing individual patent tasks. I was eager to contribute to broader innovation strategies and understand how legal frameworks support long-term business goals.
As I worked across different projects and domains within the IP space, I gained a better appreciation for the breadth of the field. Patent law is vast, and exposure to varied technologies and business contexts helped me understand which aspects resonated with me the most. Over time, it became clear that deepening my legal understanding would allow me to be more effective and more strategic in my role.
This was the turning point that led me to pursue a law degree. It was not about switching careers but about enhancing the one I was already building. Law helped me connect the dots between technology, innovation, and strategic value creation. It gave structure to the insights I had been developing through experience.
You’ve managed patent portfolios across major jurisdictions such as the US, Europe, Japan, China, Korea, and India. What are some of the most nuanced challenges you’ve encountered in aligning with these diverse legal frameworks?
Yes, that’s right, managing patent portfolios across multiple jurisdictions involves navigating various topics and requirements, which can present nuanced challenges when trying to align a global strategy.
One of the few topics to keep in mind is patent eligibility, particularly for software and business methods. Compared to other jurisdictions, the US tends to be more permissive but requires to show specific improvements in computer functionality or technological solutions to overcome eligibility rejections, following the Alice decision. Europe places strong emphasis on the technical contribution of an invention, where a business advantage alone may not be enough to establish patentability.
Technical disclosure requirements also vary significantly, and this can impact claim amendments during prosecution. For example, the European Patent Office (EPO) is very strict about amendments not containing subject matter that extends beyond the content of the application as originally filed. When making amendments, it is important to specify where the support lies in the original application. Although exact wording is not legally required, examiners generally prefer amendments that closely match the original text.
Handling of prior art and grace periods differs across jurisdictions as well. The US offers a one-year grace period after disclosure, whereas Europe generally requires absolute novelty before filing. China and India allow limited grace periods under specific conditions. These differences make the timing of public disclosures and use of nondisclosure agreements important considerations.
Inventive step criteria is another aspect to be mindful of. For example, the EPO primarily assesses inventive step using the problem-solution approach. This involves identifying the closest prior art, establishing the objective technical problem based on the differences, and determining whether the invention would have been obvious to a skilled person.
When it comes to claims, jurisdictions also vary in their preferences and fee structures. For instance, there is often a dislike of excessive independent claims, and claim fees can increase significantly with multiple dependencies or a large number of claims. Careful planning of claim scope and format is therefore necessary to balance broad protection with cost-effectiveness.
Overall, these jurisdictional nuances call for a careful and flexible approach. Understanding local laws, working closely with local patent agents and attorneys, tailoring claim language and prosecution strategies, and managing disclosures thoughtfully are important steps to building a patent portfolio that is both effective and enforceable across different regions.
What inspired your transition from practicing in the Indian IP ecosystem to pursuing an international role, particularly within the U.S. patent system? After nearly a decade of working in India, how did you navigate the shift, both technically and culturally and what were some of the key experiences as you adapted to the U.S. IP landscape?
My move to the US was not a planned career step but was driven by personal reasons. However, during my practice in India, I consistently worked with multinational companies, expatriates, senior leadership, and patent attorneys and agents from the US, Europe, and Korea. I also managed international patent portfolios and was regularly exposed to global patent laws and treaties, which provided a strong foundation for the transition.
Technically, adapting to the US patent system involved gaining a thorough understanding of its examination procedures, claim drafting nuances, and administrative and legal standards. On the cultural side, I embraced the collaborative and fast-paced work environment, learning to navigate diverse communication styles and team dynamics effectively.
Overall, my prior international exposure made the shift smoother and helped me quickly align with the US IP landscape while appreciating the cultural differences that enriched my professional growth.
In your in-house roles, you’ve worked closely with engineers and product development teams to build high-value patent portfolios aligned with business strategy. From this experience, what are some common pitfalls you often see at the early stages of innovation or idea disclosure that, if left unaddressed, can lead to challenges or setbacks during later stages of patent prosecution? How can these be proactively avoided?
A common pitfall at the early stages of innovation or idea disclosure could be insufficient technical details in the Invention Disclosures. Inventors may focus on what a new feature or a use-case is but sometimes fail to fully articulate the know-how and why behind its technical effect. This lack of depth may challenge later patent prosecution. To avoid this, we could implement a structured invention disclosure process where the patent practitioners work with the Engineers at an early phase of patent workflow and provide examples on the level of technical details needed.
Industrial Application or Utility of Inventions. It’s good to work with Inventors to demonstrate a practical application for their inventions. Jurisdictions scrutinize “abstract ideas” or “computer programs per se.” To counter this, disclosures must highlight technical effects and improvements to, for example, existing computing or vehicles, not just a new user experience.
Initial invention disclosures may focus solely on current product features, potentially overlooking future developments or competitive design-arounds. This can result in unduly narrow patent claims. It is therefore advisable to collaborate closely with inventors to explore potential workarounds, alternative technologies, and foreseeable product evolutions to ensure broader and more robust claim coverage.
By proactively addressing these areas, early ideas translate into a robust, high-value patent portfolio that aligns with business strategy.
Looking ahead, how do you foresee the role of an in-house IP professional evolving, especially in the context of generative AI, rapidly emerging technologies, and shifting regulatory environments? What skills, perspectives, or mindsets will be critical for IP professionals to stay ahead?
The role of an in-house IP professional is fundamentally transforming, demanding consistent vigilance across both technical and legal domains due to their rapid evolution. The rise of generative AI exemplifies this shift, raising complex questions from Inventorship, AI governance and evolving standards of subject matter eligibility for AI-related inventions across different jurisdictions. Furthermore, the increasing use of AI tools in patent drafting and analysis requires us to master new proficiencies while mitigating risks like data security and “hallucinations.” Staying current in these areas is crucial, allowing IP professionals to move beyond traditional counsel to provide proactive, forward-looking strategic guidance that anticipates both technological breakthroughs and their unique legal ramifications.
For patent professionals, this shift demands a deep understanding of these technologies, the ability to ask the right questions to the inventors so as to use the details to draft patent applications and create a patent portfolio that is robust, strategically aligned, and resilient to future developments (future-proof patent applications). Simultaneously, the use of AI in media and content generation is raising complex questions in copyright law, including issues around authorship, fair use, and derivative works. Navigating these emerging challenges requires both legal adaptability and technical insight.
For students and young professionals exploring a transition from engineering to law and ultimately into the IP and patent domain, what advice would you offer? Could you suggest a potential roadmap or strategies to help them stay relevant and future-ready in this interdisciplinary space?
For students and young professionals moving from engineering to patent law, the first step is to maintain your strong technical knowledge. As an engineer or STEM graduate, you have a solid foundation. Try to stay current with the latest technological trends within your specific field. Understanding the core technology is crucial, as patent law focuses on protecting innovations you thoroughly comprehend.
Next, develop your legal knowledge. Immerse yourself in legal manuals, textbooks, and case studies. You must become comfortable with legal language, statutes, and court rulings. This new legal expertise will combine with your technical background, creating a unique and powerful skill set vital for the interdisciplinary world of intellectual property. This allows you to understand the interplay between technology and legal strategy.
Finally, sharpen your writing skills. Much of your work will involve writing patent applications and legal arguments. Master both technical writing, for accurate invention descriptions, and legal writing, for clear application of the law. Also, cultivate essential soft skills like analytical thinking, perseverance, and attention to detail. These qualities are vital for success and will give you a distinct edge in this rewarding field.
Balancing a demanding career with personal well-being is no small feat. How do you maintain that equilibrium? Are there personal practices, habits, or philosophies that help you stay grounded and balanced in both your personal and professional life?
Balancing a demanding global IP role with personal well-being is vital. My approach starts with prioritizing well-being as a non-negotiable. This means regular self-care activities that recharge me. Exercise, mindfulness, hobbies, and time in nature are essential. I schedule short breaks daily to rest. Taking proper vacations allows me to truly disconnect from work. Maintaining
Effective time management helps me find that crucial balance. I plan my schedule carefully to allocate time for both professional responsibilities and personal commitments. This structured approach allows me to manage the high demands of my role without constant “on-call” pressure, creating a clear distinction between work and personal life.
A strong support network is also critical. I cultivate relationships with colleagues, mentors, friends, and family. Their guidance, emotional support, and practical help are invaluable in navigating challenges. This network provides a crucial sense of community and perspective. My personal philosophy centers on finding purpose and meaning in my work, which boosts job satisfaction. I embrace continuous learning and growth to stay adaptable.
Get in touch with Iti Negi –
No comments yet
Be the first to share your thoughts about this interview.